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BRIEF TREATISE 

ON 

UNITED STATES PATENTS, 

FOR 

INVENTORS AND PATENTEES. 

BY 

HENRY HOWSON, 

CIVIL AND MECHANICAL ENGINEER AND SOLICITOR OP PATENTS, 



CHARLES HOWSON, 

ATTORNEY AT LAW AND COUNSEL TN PATENT CASES. 



AUTHORS OF THE "AMERICAN PATENT SYSTEM," "OUR COUNTRY'S DEBT TO PATENTS," 
ANSWERS TO QUESTIONS OF THE STATE DEPARTMENT RELATINGJ 



PHILADELPHIA: 

-^ POKTER AND COATES, 

1876. 




Entered according to Act of Congress, in the year 1876, by 

PORTER & COATES. 
in the Office of the Librarian of Congress at Washington. 



'v\r' 



^ 



B. M. DUSENBERY, SHERMAN & CO., 

Stereotyper and Electrotyjger. Pnnters. 



\ 

V 



J^ 



XJ. S. Patent Office, 
Washington, D. C, March 17th 1876. 
Messrs. H. & C. Howson, 

Philadelphia, Pa. 
My Dear Sirs : — 

I have read the proof of your new book, and hasten to 
express the gratification which the perusal gave me. I have 
not seen anywhere more information relating to patents, or 
more accurate information in such compact form. I consider 
the book a ver}'- valuable one, and should be glad to see it 
widely circulated. The information it contains would be of the 
utmost benefit to the inventors in this country. 
Very truly yours, 

Ellis Spear, 
Acting Commissioner of Patents. 



PREFACE. 



The Patent Laws of the United States have direct 
bearing upon the interests of a constantly increasing 
number of persons, who are desirous of acquiring some 
knowledge of the principles of those laws. 

Exhaustive treatises on the subject, and various digests 
of decisions, have been published for the benefit of profes* 
sional men, and latterly the Patent OflSce has furnished 
detailed information concerning the administration of the 
Patent Laws in the office and in the courts* 

Pamphlet copies of the text of the law and of the Rules 
of Practice in the Patent Office, are also published and 
gratuitously distributed to inventors and patentees who 
choose to ask for them. 

The writers of these pages have for some time thought 
that there was room for a work, occupying middle 
ground between the publications of the Patent Office, and 
the lengthy and elaborate treatises and digests which 
have be^n published by private enterprise. 
'. Inventors and patentees desire to be reasonably fami- 

(V) 



VI PREFACE. 



liar with at least the outlines of a subject so intimately 
concerning them, but few have either the time or inclina- 
tion to seek the information in the pages of lengthy works 
of technical character and style. 

It is chiefly for this class that the present work has been 
designed, and the object aimed at has been to present the 
subject in terms as plain as possible, and briefly, without 
meagreness. The details of Patent Ofiice practice have not 
been minutely dwelt upon, because they are to be obtained 
from the printed and published rules and regulations of 
that office, nor has it been considered as properly within 
the scope and object of the w^ork to treat at any length 
upon the technicalities of such subjects as actions for 
infringement. The endeavor has been to give a com- 
pact and correct statement of the law as to the persons to 
whom, and the subjects for which, patents may be granted 
— as to what constitutes patentable invention or disco- 
very — as to when the right to a patent is acquired, and 
how it may be lost — as to the nature of the right which 
a patent confers — how that right may be transferred or 
distributed — what acts are violations of the right, and 
w^hat remedies may be had for such violations. 

The plan pursued has been to give the text of the law 
upon the various heads treated, with comment upon 
the sections quoted, and with citatians from decisions of 
the United States courts. 



CONTENTS. 



CHAPTER I. 

Introductory. Origin of Patents. Patents not monopolies. 
Equity of Patents. Policy and utility of Patents. Patents and 
Capital, ....... p. 9-18 

CHAPTER II. 

To whom Patents are granted. Who is first Inventor or Dis- 
coverer in Law. Relation of employer and employee in re- 
spect of invention. Diligence in perfecting Invention, and 
adapting it to use. Prior invention, knowledge or use. Prior 
Patent or printed publication. Abandonment. Public use or 
sale for more than two years before application. Rights of pur- 
chaser before application for Patent, . . . 19-33 

CHAPTER III. 

For what Patents are granted. Art. (Process.) Machine. 
Manufacture. Composition of Matter. What are Patentable 
Discoveries. Patents not granted for abstract principles. New 
Principles, how patentable, . ^ . . 34-44 

CHAPTER IV. 

Functional claims bad. Mechanical processes. New use of 
6ld device or process. Double use. Substitution of material. 
Changes of form. Equivalents, .... 45-56 

CHAPTER V. 

Combinations. Parts must co-operate. Parts may be new or 
old. Number, character and relation of parts, how material. 
Equivalents in cases of combination. Articles of Manufacture. 
Compositions of matter. Improvements, . . . 57-69 

CHAPTER VI. 
. Application for Patent. What is required of the inventor. 
Drawing. Model. Oath of invention. Effect of prior foreign 
Patent, ..... . 70-74 

(vii) 



Ylii CONTENTS. 



CHAPTER VH. 
Specifications and claims. The description. Effect of inten- 
tional concealment or misstatement. Claims, how interpreted. 
What faults in description or claim will make Patent invalid, p. 75-63 

CHAPTER VIII. 

Application for Patent. Proceedings in the Patent Office. 
Official examination. Appeals to Board of Examiners-in-cbief 
— to Commissioner — to Supreme Court, District of Columbia. 
Remedy for refusal of Patent, by bill in Equity. Abandoned 
applications. Renewed application. Forfeiture of Patent by 
non-payment of second fees. Renewal of application, . 83-95 

CHAPTER IX. 

Interfering applications and interfering Patents. Interference 
proceedings in Patent Office. Power of Commissioner in cases 
of interference. Bnl in Equity against holder of interfering 
Patent, 96-lQO 

CHAPTER X. 

Remedies for defective Patents. Disclaimer. To what casea 
applicable. How and by whom made. Unreasonable neglect or 
delay to file. Nature and efi"ect of disclaimer. Re-issue. To 
what cases applicable. Who may obtain. Nature and effect of, 101-112 

CHAPTER XL 

Assignments. Grants. Licenses. Assignment before Patent. 
After Patent. Difference between assignment and grant of ex- 
clusive right. Relations of assignor and assignee. Grants of 
exclusive right. Requisites of assignment or grant. Record- 
ing of. Effect of failure to record within three months. . Licensee, 
who is. Rights of licensees. Licensor and licensee, relations 
of. Rights of purchasers of patented articles, . . 113-125 

CHAPTER XIL 
Infringement. Actions for infringement, in what courts 
brought. Action at law. In Equity. Powers of Equity Courts. 
Who may sue for infringement. When State Courts may inquire 
into validity of Patent. Defences to action for infringement. 
Special defences. Notice of. Preliminary injunction. Appeal 
to Supreme Court. Writ of error. Marking patented articles. 
Penalty for fraudulent marking, .... 126-140 

CHAPTER XIIL 
Caveats. Who may file. What requisite. May be renewed 
from year to year. Object and effect of, . . . 141-145 

CHAPTER XIV. 
Design Patents. Terra of. What constitutes similarity of 
design. Meaning of useful design, . . . 141-156 



TREATISE ON PATENTS. 



CHAPTER I. 

Introductory, 

The familiar word "Patent," an abbreviation of the term 
** Letters Patent," is suggestive of the origin to which our 
Patent Laws, in common with those of Great Britain, are to be 
traced. 

The granting of exclusive privileges to make or vend differ- 
ent commodities, was an incident of the control which, from 
the earliest times, the English crown exercised over the trade 
of the country, and these grants were made by Letters Patent, 
i. e., open letters, sealed with the great seal, and addressed by 
the crown to the subjects at large. 

It was the doctrine of the common law, as expounded by the 
courts, that the prerogative of granting such exclusive privi- 
leges was vested in the crown as the supreme executive power 
of the state, to be exercised in behalf of and for the benefit 
of the public, and was limited to the granting of temporary 
exclusive privileges to the introducers of new manufactures. 
But the prerogative, so long as its object was not defined, nor 

its exercise regulated by statute, was grossly abused. 

(ix) 



10 INTRODUCTORY. 



^' By degrees," we are informed, '' the powers confided to the 
executive were perverted from their proper use, and, under the 
pretence of the better government of trade, the prerogative 
of the crown was employed in sanctioning, in return for pecu- 
niary aid, individuals and corporations in very oppressive 
monopolies." 

Patents of monopoly, as they were termed, presented a con- 
venient mode of rewarding royal favorites at the expense of the 
subjects at large. The practice reached its height during the 
reign of Elizabeth, who granted many such patents to her 
servants and courtiers, giving them exclusive privileges to 
make, or trade in, the most ordinary articles, even some of the 
very necessaries of life, the prices of which were thus raised 
enormously. 

At last, the famous '' Statute of Monopolies,'^ 21 James I., 
c. 3, put an end to the mischief, by declaring that all monopo- 
lies theretofore granted, or thereafter to be granted, of or for 
the sole buying, selling, making, working or using of anything 
within the realm, contrary to law and utterly void and of no 
effect." But from this general condemnation the act excepted 
*' Letters Patent for limited periods of the sole working or 
making of any manner of neiv manufactures within the realm, 
to the true and first inventor and inventors of such manufac- 
tures, which others, at the time of making such Letters Patent 
and grants, shall not use.'' This clause of exception is the 
basis of the present English Patent Laws, and is the earliest 
legislative recognition of the public policy of allowing tempo- 
rary exclusive privileges to the inventors of new manufactures. 



PATENTS, TO WHOM GRANTED. H 

A century and a half later this policy was recognised in that 
clause of the Constitution of the United States which em- 
powers Congress to " promote the progress of science and the 
useful arts, by securing for limited times to authors and inven- 
tors the exclusive right to their respective writings and dis- 
coveries." 

Congress, in pursuance of this power, passed the Patent Act 
of 1790, entitled '' An Act to promote the progress of the useful 
arts," which was repealed and replaced by the Act of 1793. 
This in turn gave way to the Act of 1836, the provisions of 
which were amended and added to by several subsequent acts, 
and finally the Act of July 1870 was passed ^' to revise, consol- 
idate and amend the statutes relating to patents and copy- 
rights," and is embodied, with little change, in the Revised 
Statutes approved June 22d 1874. 



The tracing of the relationship betvreen modern Patents and 
the old English grants of monopoly has been objected to, as 
tending to give rise to erroneous impressions. 

It is said that a patent is not a monopoly, since it does not 
take from the public at large, the enjoyment of anything 
which they before possessed. And certainly, a patent is not a 
monopoly in that odiouS sense, which, from the abuses we have 
briefly mentioned, the word acquired. It restrains the public 
at large from confiscating the fruits of individual ingenuity, 
labor and expense, and so far, it does not deprive them of any 
freedom which they can rightly claim to enjoy, but is simply 
an enforcement of the principles of natural equity. 

It can only be said to partake of the nature of a monopoly, 



12 INTRODUCTORY. 



in the sense of taking anything from the public, in so far as it 
restrains not only the mere copyist, but any original inventor, 
who is not also the first. This last efiect is in restraint of 
natural freedom, for being the first to make an invention or 
discovery confers no natural right to prevent others from 
making themselves, and if they make, using the same inven- 
tion or discovery. But to confer that right by positive law 
upon the first inventor, is a price which the public can well 
afibrd to pay for the benefits which they derive from the con- 
cession, and a comparison of modern Patents with the old 
grants of monopolies furnishes an instructive contrast between 
mischievous and beneficial restraints upon the public at large, 
in favor of individuals, restraints, in form the same, but in 
spirit and effect totally at variance. 

Modern Patent Laws are in fact an adaptation to the promo- 
tion of important public interests of an old governmental 
power, originally employed — if not devised — as a means of 
preying upon the public, and the " Statute of Monopolies" by 
limiting the power to the granting of exclusive rights for spe- 
cified periods to the first inventors of new manufactures wrought 
the change. 

In this limitation resides the whole equity of Patents ; a new 
or improved useful art or manufacture is an important addition 
to the wealth and power of the community and at the same 
time generally costs the originator more or less thought, labor 
and pecuniary expense. 

Granting that the disclosure of any such useful novelty of 



EQUITY OF PATENTS. 13 



which he may be possessed is one of the duties which the indi- 
vidual owes to the society of which he is a member ; he may 
claim for this kind of .useful production the same return to 
which any other kind is acknowledged to entitle him, i. e., 
payment proportionate to its value to society and its cost to 
himself. 

And in this connection it is important to remember that it 
is not a mere abstract conception which of itself makes the 
valuable consideration, but the physical embodiment of the 
conception in a way to demonstrate its utility, and make it 
practically available. 

Production of this kind being at once most useful to the 
public, and apt in proportion to that utility to be expensive to 
the producer, merits a substantial return, and if the prospect 
of such a return is not held forth, will not flourish. 



A better and more equable method of providing such a return 
could not be devised than that of a temporary monopoly, since it 
leaves the payment of the inventor to time, which must deter- 
mine the real value of a new thing to the public. 

It is just and proper that a new and useful invention should 
be paid for by the public in proportion to its proven value to 
them, and that the mode of valuation should be the same as in 
the case of other products of individual skill and labor. 

The public verdict, as evidenced in demand, is the best 
general test of the value of an article, and the profit derived 
from manufacture and sale, if these be carried on with proper 
enterprise and discretion, will be in proportion to the value. 



14 INTRODUCTORY. 



To use the words of Bentham " It (a patent of invention) is 
an instance of a reward peculiarly adapted to the nature of the 
service, and adapts itself with the utnuost nicety to those rules 
of proportion to which it is most difficult for reward, artificially 
instituted by the legislature to confer. If confined, as it ought 
to be, to the precise point in which the originality of the inven- 
tion consists, it is conferred with the least possible waste of 
expense. It causes a service to be rendered, which, without it 
a man would not have a motive for rendering, and that only by 
forbidding others from doing that, which were it not for that 
service, it would not have been possible for them to have done. 
Even with regard to such inventions, for such there will be, 
where others besides him who possesses the reAvard have scent 
of the invention, it is still of use by stimulating all parties and 
setting them to strive which shall first bring the discovery to 
bear. AYith all this, it unites every property that can be 
wished for in a reward. It is ^' variable, equable , commensura- 
ble, characteristic, frugal, promotive of perseverance, subser- 
vient to compensation, popular and reasonable." 

That patents have been an effective means of promoting the 
progress of the useful arts, no one conversant with the subject 
will deny ; but there are those who think or afiPect to think, 
that when the arts have reached a high state of development, 
their further progress may safely be intrusted solely to the 
spur of private competition. 

But in the absence of protection by law, for an inventor to 
disclose his improvement is to give competitors something 
which they can then probably use to better advantage than 



POLICY OF PATENTS. 15 



himself, because they are relieved of the labor and expense 
attending the first practical application of an idea, and also 
because they may have more capital than himself. Secrecy 
is his only alternative, and one which cannot be depended 
upon, and is besides detrimental to the public, since it deprives 
them for a time at least of useful information, which it is to 
their interest to have speedily disseminated, and tends more- 
over to destroy mutual confidence in business. 

Free competition means competition in which the parties 
can pursue their business upon terms as equal as respective 
skill, industry and means will allow. It is not, therefore, free 
competition, in the true sense, if the invention which has cost 
one man an expense of thought, time and money, is available 
without any expense to his competitors. That is to make a 
man's own labor the very means of destroying the equality. 
It is no answer to say that the experience of one competitor to- 
day may be that of another to-morrow, that the risk is equal. 
There could be no real equality of risk, but the risk, obviously 
enough, would weigh most heavily upon the most meritorious, 
the greatest producers would be the greatest losers by such a 
system of exchange, or reciprocal piracy. 

But it may be said again, the inventor would derive from his 
ingenuity the like advantage as from his skill, in the reputa- 
tion it would give his productions, and the consequent demand 
for them. The laws of all civilized nations have recognised 
that species. of property which consists in the reputation of a 
trader, acquired by his skill and industry, and have provided 
means by which that property may be secured. A simple 



16 INTRODUCTORY. 



mark, to the use of which in connection with specific goods the 
law gives its appropriator an exclusive right, will serve to dis- 
tinguish those goods in the market, and enable him to reap 
the just reward of his skill. But skill differs from invention, 
inasmuch as simple mental apprehension will not pass the pos- 
session of it from one to another. 

The skill upon which a trader's reputation is built does not 
pass from him with the goods which it has produced. Others 
may acquire equal or greater skill, but only by equal or greater 
exertion of the same qualities, by which his own skill has been 
acquired. 

But the original thought embodied in a process, machine or 
device is thereby exposed for any ordinary intelligence to 
copy ; it passes with the thing in which it has found expres- 
sion, and after the idea has passed into the possession of com- 
petitors, the only question with the public is where they can 
buy what they want most advantageously to themselves. In 
very rare cases, the answer to this question may be such as to 
maintain a monopoly in the hands of the originator. This 
can only arise from some accident of power, the possession of 
great means, special skill and facilities, and a monopoly of pro- 
duction, depending solely upon power to shut out or crush 
competition by superior resources, is fortunately rare. Those, 
however, who might possess such power would have no incen- 
tive to invent, but every temptation to let well enough alone. 

Small producers would find but a poor compensation for 
their ingenuity, time and labor in the reputation which a 
transient exclusive possession, resting merely on priority in 



PATENTS AND CAPITAL. 17 

time, might give them. They would not be slow to discover, 
that to invent was actually to feed at their own expense the 
reputation of more formidable rivals. Thus the relative posi- 
tions of different classes of trading producers would operate to 
prevent inventive activity in any. 

Turning to the class of non-trading producers, employees 
having no direct business connection with the public, a class 
from which a large, perhaps the largest, proportion of the most 
useful invention proceeds. To talk to them of the advantage 
reputation would give them, is mockery. 

Reputation can be of moment to them as workmen, only as 
it affects their ability to obtain employment at good wages. 
This their repute for skill will do, because by purchase their 
skill becomes the secure property of the purchaser so long as 
the connection lasts. But of what service to them would a 
reputation for ingenuity be, if employers could appropriate the 
fruits of that ingenuity without payment, but could not, by 
payment, secure them as property ? If employers could not 
find their account in the personal exercise of invention, they 
would hardly consider its exercise by employees an element 
of value. 



Concentration of capital, based upon patents, though not 
without its attendant mischiefs, is upon the whole exceedingly 
beneficial, since it commands for the practical development of 
useful inventions, all the resources of skill and the advantages 
of commercial credit. 

As a rule, the first forms of the most valuable inventions are 
comparatively crude, cumbersome, costly and inefficient, and so 



18 INTRODUCTORY. 



without the aid of capital, they would be likely to remain. 
It is, as well to the wealthy manufacturing firms and corpora- 
tions, as to individual genius that we owe the compact, durable 
and cheap labor-saving devices of to-day and the constant im- 
provements which are being made in them. Patents have 
made wealth directly tributary to the progress of the useful 
arts by making it possible to employ great capital profitably 
in mechanical production. Let the law cease to extend its 
protection to the labor of the inventor, and the wealth of the 
capitalist will no longer extend its necessary aid to that labor ; 
useful discoveries will be few, those made generally available 
still fewer, until finally the practical arts will come virtually 
to a stand-still. Certain it is that a field of labor in which 
none can be secure of finding profit, will soon cease to be culti- 
vated by any. 

The true purport of Patent Laws is perhaps not quite cor- 
rectly designated by the common saying, that they recognise an 
invention as property. It seems more correct to say that they 
recognise its conception, completion and disclosure as value 
received by the public for which the donor is entitled to pay- 
ment, and for the purpose of securing him this payment they 
endow him with a temporary property in the invention. The 
first to disclose an invention \s^ prima facie, the party entitled 
to this artificial property, since to him the public is appa- 
rently indebted for a forward step in the progress of the useful 
arts. The exceptions to this proposition, under the Patent 
Laws of the United States, will be mentioned in the body of 
the treatise. 



PATENTS, TO WHOM GRANTED. 19 



CHAPTER II. 

To whom Patents are Granted. 

" Any person who has invented or discovered any new and 
useful art, machine, manufacture or composition of matter, or 
any new and useful improvement thereof, not known or used 
by others in this country, and not patented or described in any 
printed publication, in this or any foreign country, before his 
invention or discovery thereof, and not in public use or on sale 
for more than two years prior to his application, unless the 
same is proved to have been abandoned, may, upon payment of 
the fees required by law, and other due proceedings had, obtain 
a patent therefor:'' Sect. 4886 R. S. 

Considering the question, who are entitled to patents under 
this section, it will be noticed that '' inventors and disco- 
verers'' only are named, but by sect. 4895, it is provided that 
*' patents" may be granted and issued or re-issued to the 
assignee of the inventor or discoverer, the assignment thereof 
being first entered of record in the Patent Office. As we shall 
see hereafter, however, the application for an original patent 
must always be made by the inventor, if living, or, if he be 
dead, by his executor or administrator. 

Grantees of Letters Patent, therefore, must be '^ inventors 
or discoverers, their legal representatives or assigns.'^ 



20 PATENTS, TO WHOM GRANTED. 

The words any person indicate that aliens as well as citizens 
are entitled to the benefit of the law. 

VV^ho is an inventor or discoverer within the meaning of the 
law? To this question the section quoted replies, he whose 
invention or discovery was not, before he made it, known or 
used by others in this country, nor patented or described in a 
printed publication in this or any foreign country. 

In such a case he is the first inventor or discoverer within 
the meaning of the law, and is entitled to a patent, if he has 
not surrendered the right by abandonment of his invention to 
the public, or by allowing it to be in public use or on sale for 
more than two years before applying for the patent. 

The invention, besides being new, must be useful, i. e., it 
must be capable of being used, which implies that it has been 
brought to that state of perfection or completeness, that if 
fully and correctly described in the specification, those skilled 
in the art may from the information thus given, without 
experiment or invention of their own, be able to practise the 
invention. 

Crude and imperfect experiments do not confer a right to a 
patent : Agawam Co. v. Jordon^ 7 Wallace 583 ; Washburn et 
al. V. Gould, 3 Story 133 ; Seymour y. Osborne^ 11 Wallace 516. 
Inventions or discoveries contemplated by the law as patent- 
able, are such as are perfected and adapted to use. Not that 
an inventor or discoverer, before he can obtain a patent must 
have actually practised his invention or discovery ; that is not 
requisite, nor usually the case, but to obtain a valid patent, it 
must appear that his invention or discovery can be practised 



FIRST INVENTOR. 21 



from his specification or description of it, by those skilled in 
the art, without other aid than their own judgment and skill. 

The grant of a patent raises a prima facie presumption that 
the applicant is the true and first inventor or discoverer of an 
invention perfected and adapted to use, and therefore the Com- 
missioner of Patents, before issuing a patent, must be satisfied 
that the specification properly discloses such an invention — 
one that is not only new, so far as the records of the ofiice 
show, but useful in the sense of being capable of use. And 
as the right to a patent rests upon the presumption that the 
claimant was the first to produce, and make beneficially known, 
some useful thing, so to defeat a patent granted on the ground 
of a prior invention by some other person it must be shown 
that the alleged prior inventor had actually produced the thing 
and made it capable of use. A prior conception will not suffice, 
nor mere experiments, if not carried to the point of perfecting 
the invention and adapting it to actual use. *' If a person hav- 
ing some vague idea of a principle make numerous trials and 
experiments, if those trials and experiments do not result in 
such knowledge upon his part as enables him to put in suc- 
cessful practice the idea of which he has such vague notion, 
he does not become an inventor in the sense of the patent law. 
Such a person has never embodied the principle so as to make 
it available for practical use, and the party who embodies the 
principle and makes it available for practical use, is the party 
who is entitled to a patent and protection :" Ransom v. Mayor, 
1 Fisher 252. 

" Though others may have liad similar ideas and may have 



22 PATENTS, TO WHOM GRANTED. 

experimented upon them, the person who first perfected the 
idea, and made it capable of practical use, is the inventor, and 
entitled to a patent.'^ 

The many decisions of like tenor, proceed upon the principle 
that the Patent Law is intended to encourage useful inven- 
tions, that is, improvements, which are in condition to be prac- 
tised or used. An undeveloped, umembodied conception, 
however suggestive or valuable in itself, is not such an in- 
vention. 

But the rule is not to be understood as meaning that as be- 
tween two independent inventors, claiming the same thing, 
the right necessarily belongs to the one who may have first 
reduced the invention to practice. On the contrary, although 
a patentable invention within the meaning of the law is one 
perfected and adapted to actual use, the right of a party who 
has produced such an invention, is referred to the time of his 
conception of the invention, provided he has perfected it and 
adapted it to actual use with reasonable diligence. 

In actions for infringement the defendant may prove that 
the patentee had surreptitiously or unjustly obtained the patent 
for that which was first invented by another, who was using 
reasonable diligence in adapting and perfecting the same : 
Sect. 4920 R. S. This provision applies to two classes of cases, 
that where the patent has been obtained in fraud of the true 
inventor, and that also where the later of two independent in- 
ventors has been the first to apply for and obtain the patent. 

" It is the right and privilege of a party, when an idea enters 
his mind in the essential form of invention, inasmuch as most 



INVENTION — CONCEPTION. 23 

inventions are the result of experiment trial and eifort, and 
few of them are worked out by mere will — to perfect, by ex- 
periment and reasonable diligence, his original idea, so as not 
to be deprived of the fruit of his skill and labor by a prior 
patent, if he is the first inventor. But there must be reasona- 
ble diligence, looking to all the facts of the case : Cox v. Griggs^ 
2 Fisher 174. 

And though an imperfect and incomplete invention, resting 
in mere theory, or in intellectual notion or in uncertain experi- 
ments is not patentable, yet the invention, i. e., the finding out 
of something new by an operation of the intellect, is the basis 
of the right, which by perfection and adaptation to actual use 
is completed, so that he who invents first will have the prior 
right, if he is using reasonable diligence in adapting and per- 
fecting the same, although the second inventor has in fact first 
perfected the same, and reduced it to practice in a positive 
form. 

As to what constitutes invention in the sense of intellectual 
origination, there must have been more than the mere idea of 
accomplishing a certain result, there must have been a concep- 
tion of substantially the means or method involved of attaining 
that result, and the conception it would seem must have been 
so far clear and mature that the inventor is prepared to give 
explanations, sufficing to enable one skilled in the art to carry 
out the invention. 

The person who is the first to conceive and give expression to 
the idea of an invention, in such clear and intelligible man- 
ner that a person skilled in the business could construct the 



24 EMPLOYER AND EMPLOYEE. 

thing, is entitled to a patent provided he used reasonable dili- 
gence in perfecting it.'^ 

The right of the first to invent, in the sense of conceiving a 
new thing, is well illustrated by the cases touching the often 
recurring question of the relation of employer and employee. 

" Where a master workman, employing other people in his 
service, has conceived the plan of an invention and is engaged 
in experiments to perfect it, no suggestions from a person em- 
ployed by him, not amounting to a new method or arrangement 
which ill itself is a complete invention, is sufficient to deprive 
the employer of the exclusive property in the perfected im- 
provement. No one is entitled to a patent for that which he 
did not invent, unless he can show a legal title to the same 
from the inventor, or by operation of law ; but where a person 
has discovered an improved principle in a machine, manufac- 
ture, or composition of matter, and employs other persons to 
assist him in carrying out that principle, and they, in the 
course of experiments arising from that employment, make 
valuable discoveries ancillary to the plan and pre-conceived 
design of the employer, such suggested improvements are in 
general to be regarded as the property of the party who dis- 
covered the original improved principle, and may be embodied 
in his patent as a part of his invention.'^ 

'^ Suggestions from another made during the progress of such 
experiments, in order that they may be sufficient to defeat 
a patent subsequently issued, must have furnished such in- 
formation to the person to whom the communication was made 
that it would have enabled an ordinary mechanic, without the 



PATENTS, TO WHOM GRANTED. 25 

exercise of any ingenuity and special skill on his part, to con- 
struct and put the improvement in successful operation :'' Ag- 
awam Wool Co. v. Jordan^ 7 Wallace 583. 

Invention is the work of the brain, and not of the hands. 
If the conception be practically complete, the artisan who 
gives it reflex and embodiment in a machine is no more the 
inventor than the tools with which he wrought : Blandy v. 
Griffith, 3 Fisher 609. 

The adoption by an inventor of a suggestion made in the 
course of experiments, of something calculated more easily to 
carry his conceptions into effect, does not affect the validity of 
the patent: Allen v. Rawson, 1 C. B. 551 (English case). 

The originator of an invention is entitled to avail himself 
of the skill of a mechanic in perfecting his device, and does not 
lose his right to it. because he adopts suggestions made by the 
mechanic which do not relate to the gist of the invention : 
Cogswell and Judson v. Burke, 1 0. G. 380. 

In cases arising out of conflicting claims of employer and 
employee, to the same invention, if it appear that the em- 
ployment of the latter were special to assist in developing and 
putting into practice ideas of the employer, all the presump- 
tions as to the invention and every material part of it are 
with the employer. But in cases where the employment has 
been a merely general employment to labor in that branch of 
the arts in which the employee may be skilled, no presumption 
of the kind exists. 

As'to the question, what is reasonable diligence in adapta- 
tion and perfection necessary to enable a party to maintain a 



26 DILIGENCE IN ADAPTING AND PERFECTING. 

claim of prior invention, obviously no general rule can be 
given. It is purely a question of fact, to be determined only 
by consideration of the nature of the invention, and the cir- 
cumstances in which the claimant may have been situated. 
There must have been reasonable diligence looking to all the 
facts of the case. 

To preserve the right of the first to originate, he must have 
been using reasonable diligence in adapting and perfecting the 
same, at the time of the subsequent invention : Reed v. Cutter, 
I Story 599 ; Agawam Co. v. Jordan, 7 Wallace 583. If he 
does not use reasonable diligence to perfect the invention, 
after the idea of it is conceived, and in the meantime another 
not only conceives the idea but perfects the invention, and 
practically applies it to public use, the latter is the first and 
original inventor, and a patent granted to the former vrill be 
void, as he is not the first and original inventor : Ransom v. 
Mayor, 1 Fisher 252. 

The first to invent then, i. e., to clearly conceive the idea of 
a new thing, will have the prior right, if he uses reasonable 
diligence to perfect his invention and adapt it to actual use, 
and by perfecting the law means not that an invention should 
be carried to a point where there could not be any subsequent 
improvement, but that it should be completed so as to be of 
some practical utility : Johnson v. Root^ 2 Fisher 291. 

This is in accordance with the object of the Patent Laws 
which is the encouragement of useful invention. 

The party entitled to the benefit of the law is he who has 
been first to produce and be able to commmunicate to the pub- 



FIRST INVENTOR. 27 



lie some new thing capable of being used. So the presump- 
tion raised by the possession of a patent that the applicant 
was the first inventor may bo rebutted by proof, either that 
the thing shown and described in the patent cannot be prac- 
tised or used, or, that before the invention or discovery of it 
by the patentee it was known or used by others in this country, 
or patented or published here or abroad. 

According to the words of the section, the thing invented or 
discovered, to entitle the claimant to a patent, must not, prior 
to his invention or discovery, 

1. Have been known or used by others in this country ; or 

2. Have been patented, or described in a printed publication 
in this or any foreign country. 

And Sect. 4920 R. S. specifies as one of the defences which 
may be made to an action for infringement, the defence that 
the patentee was not the original and first inventor or disco- 
verer of any substantial and material part of the thing patented. 

The rulings of the courts as to the force and effect of these 
words are referable to the general principle that to defeat 
the presumption that a patentee was the first to produce and 
confer upon the public the benefit of some new and useful 
thing described and claimed in his patent, it must appear that 
prior to his invention or discovery, knowledge of the same or 
substantially the same thing existed among other members of 
the public. 

So, it has been held, that the prior knowledge and use meant 
by the statute is prior knowledge and use in a manner accessi- 
ble to the public {Gayler v. Wilder, 10 Howard 496 ; Cahoon 



28 PATENTS, TO WHOM GRANTED. 

V. Ring J 1 Fisher 397), not that there must have been any- 
general knowedge or use by the public, for a patent may be de- 
feated by showing that the thing claimed in it as new had been * 
discovered and put into actual practical, open use prior to the 
discovery of the patentee, however limited the use or know- 
ledge of the prior discovery might have been : Bedford v. 
Hunt^ 1 Mass. 302; Rich y. Lippincott, 2 Fisher 1. Prior 
knowledge and use by a single person is sufficient; the num- 
ber is immaterial. 

And there are decisions that the defence of prior invention 
may be established by proof of the prior maJdng of a device, 
in condition for practical use, without proof of actual use: 
Woodman v. Stimpson, 3 Fisher 98 ; Pitts v. Wemple, 2 Fisher 
10. But, probably, in most cases, actual use can be the only- 
satisfactory proof of the completeness and utility of an alleged 
prior invention. 

The prior knowledge which will defeat a patent must have 
been substantially such knowledge as the patent itself gives, 
" To defeat a patent which has been issued, it is not enough 
that some one, before the patentee, conceived the idea of effect- 
ing what the patentee accomplished. To constitute such a 
prior invention as will avoid a patent that has been granted, 
it must be made to appear that some one, before the patentee, 
not only conceived the idea of doing what the patentee has 
done, but also that he reduced his idea to practice and embodied 
it in some useful and practical form. The idea must have 
been carried into practical operation. Mere experiments, which 
were unsatisfactory, and have been abandoned, are not enough : 



PRIOR KNOWLEDGE OR USE ABROAD. 29 

Ellithorpe v. Robinson, 2 Fisher 83 ; CaJioon v. Ring, 1 Fisher 
397; Howe v. Underwood, 1 Fisher 160; Many v. Jagger, 1 
Blatch. 372 ; Coffin v. 0^c^6?^, 18 Wallace 120. 

In brief, it would appear to be the general rule that the pre- 
sumption in favor of a patentee as first inventor must prevail 
as against a defence of prior invention, knowledge or use, un- 
less it appear that some one, before his invention or discovery, 
had not only conceived but perfected the thing, and adapted 
it to practical use, and this had been evidenced by actual use. 
Prior knowledge or use in a foreign country are not of 
themselves a bar to a patent here to a hondjide inventor and 
applicant. 

Whenever it appears that the patentee, at the time of making 
his application for the patent, believed himself to be the origi- 
nal and first inventor of the thing patented, the same shall not 
be held to be void on account of the invention or discovery, or 
any part thereof, having been known or used in a foreign 
country, before his invention or discovery thereof, if it had 
not been patented or described in a printed publication ; Sec. 
4923. 

Unpatented and unpublished inventions, existing in foreign 
countries, are not presumed to be known here, and therefore 
as the first to convey to the public a knowledge of the in- 
vention, a person who, independently, though subsequently, 
invents and patents the same thing here, may fairly be re- 
garded as the first inventor within the true meaning and intent 
of the law. 

But if one should obtain a patent, as inventor, for something 



30 PATENTS, TO WHOM GRANTED. 

which he has derived from abroad, or even though it may 
have been original with himself, if at the time of his applica- 
tion he was aware that it had been known or used abroad 
prior to his own invention, his patent would be void, although 
such prior knowledge or use abroad were not publicly known 
here. 

Therefore, although the general rule is that prior invention, 
knowledge or use in a foreign country can be proved only by 
a patent or published description, there is an exception to the 
rule, where it is proposed to show that the patentee, at the 
time of his application, knew of such prior foreign invention, 
knowledge or use. For the purpose of bringing such know- 
ledge home to the applicant, oral proof is admissible : For- 
hush V. Cook, 2 Fisher 2. 

An invention or discovery, to be patentable, must not have 
been patented or described in a printed publication, in this or 
any foreign country, prior to the invention of the claimant. 

As to the requisite character of a prior patent or printed 
publication, domestic or foreign, invoked to bar or defeat a 
patent, it has been held by the Supreme Court that to do so " it 
must contain and exhibit a substantial representation of the 
patented improvement, in such full, clear and exact terms as to 
enable any person skilled in the art or science to which it 
appertains to make, construct and practise the invention 
patented." Th^t is, it must substantially answer the purposes 
of such a specification as our law requires: Sq/mour y. Os- 
bornej 11 Wallace 516. Furthermore, by a printed publication 
which will bar or defeat a patent, is meant a work of a public 



USE BEFORE APPLICATION. 31 

character, intended for the public, and made accessible to the 
public by publication before the discovery of the invention by 
the patentee. 

A printed book or pamphlet intended merely for private 
circulation is not sufficient : Reeves v. Keystone Bridge Com- 
pany^ 0. G., vol. 1, 466. 

Finally, the inventor to entitle him to a patent must not have 
caused or allowed his invention to be in public use or on sale 
in this country for more than two years before applying for a 
patent, and must not at any time before application have aban- 
doned the invention to the public. 

Public use or sale of an invention by the inventor, or with 
his knowledge and consent, for more than two years before ap- 
plication for a patent, is conclusive evidence of abandonment. 
By '^ public use" is here meant an open use of a completed 
invention for ordinary purposes of business. Experimental 
use, for the purpose of testing an invention and discovering 
what modifications or improvements may be necessary to entire 
practicability, is not construed as abandonment, even though 
such use may have been in public and may have been con- 
tinued for more than two years : Birdsell v. McDonald, 0. G. 
vol. 6, 682. 

On the other hand, the public use for more than two years, 
which will bar the inventor's right to a patent, is not necessa- 
rily a public use continued during more than two years 5 but 
any public use of the kind indicated will, notwithstanding it 
may have l)eeh inextensive and not continued, have that efi'ect, 
if it occurred more than two years before application. 



32 PATENTS, TO WHOM GRANTED. 

What use for more than two years will be regarded as ex- 
perimental, and therefore not fatal to the inventor's right, must 
depend upon such circumstances as the particular character of 
the invention, its degree of radical novelty, the necessity of 
lengthened use to test its practicability, the need of a public 
use for that purpose, the expressed intention of the inventor 
in causing or allowing the use, and the reservation or non-re- 
servation of his rights. 

Similar questions enter into the consideration of how far 
public use or sale for less than two years can be received, as 
evidence tending with other circumstances to show abandon- 
ment. It is never of itself evidence of abandonment, but may 
be considered in connection with other acts or with declara- 
tions of the inventor. 

Abandonment, which may occur at any time, is never pre- 
sumed except from public use or sale for more than two years 
before application, and can be otherwise proved only by positive 
and unmistakable declarations or acts of the inventor, showing 
his deliberate intention not to claim the benefit of the Patent 
Law. 

The burden of establishing by satisfactory evidence the fact 
that a patented invention was on sale for two years, or was 
abandoned prior to application, is upon the defendant. 

Sect. 4899, R. S., provides — That every person who may 
have purchased of the inventor, or with his knowledge and 
consent may have constructed any newly-invented or discovered 
machine, or other patentable article, prior to the application by 



USE BEFORE APPLICATION. 33 

the inventor or discoverer for a patent, or sold or used one so 
constructed, shall have the right to use and vend to others to 
be used, the specific thing so made or purchased without lia- 
bility therefor. The object of this section is to prevent any 
unjust interference by a patentee with the rights of third par- 
ties acquired from him, either by positive purchase or implied 
consent, before his application for a patent^ and is limited to the 
right to use without liability therefor the particular machine 
or other thing which they may have bought from him, or with 
his knowledge and consent have made and pat into use. 

Mere wrongdoers, those who may have taken advantage of 
knowledge communicated to them by the inventor, or otherwise 
acquired from him, to make and use the invention before his 
application without his knowledge, or though with his know- 
ledge, yet without his consent, either positive or to be implied 
from his failure to object or assert his right, are plainly ex- 
cluded by the language of the section. Such parties become 
infringers from the moment the patent is granted. 



3 



34 PATENTS, FOR WHOM GRANTED. 



CHAPTER III. 

For what Patents are granted. 

Patents are granted for any new and useful art, machine, 
manufacture or composition of matter, or any new and useful 
improvement thereof. 

It would seem that the word " manufacture" is used here 
in the sense of an article of manufacture, a " thing" made or 
manufactured by hand or by machine, and not itself a *' ma- 
chine" or a '' composition of matter" in that limited sense in 
which the latter term is used. The term "art" appears to 
be intended to cover those inventions which relate to the 
process of manvifacture, i, e., of reducing materials by hand 
or by machine into a form or condition fit for use, but which 
are not susceptible of being classed as machines. 

A ** process" is not named by the law as the subject of a 
patent, but is included under the general term " useful arc." 
An art may require one or more processes or machines in 
order to produce a certain result or manufacture : Corning v. 
Burden^ 15 Howard 267. 

The term •' machine'^ includes every mechanical device or 
combination of mechanical powers and devices to perform 
some function and produce a certain effect or result ; Ids 



DISCOVERIES — NEW PRINCIPLE. 35 

The term " composition of matter/' as distinguished from the 
term ^'manufacture," appears to designate especially those 
compounds, chemical or mechanical, which are used in medicines 
or in the arts : Curtis on Patents 28. 

It will be noticed that the statute expressly includes not 
only new arts, manufactures and compositions of matter, but 
improvements upon existing subjects of any of these classes. 

From the context, it is evident that the word ^^ discovery^' in 
this section is used, not in its ordinary sense as applied in 
science. A discovery of a scientific truth, a law of nature, a 
property of matter, is not in itself patentable, but a patentable 
discovery is one which is usefully applied, and the patent is 
based upon the useful application made of it in some art or 
manufacture or in some mechanical construction. 

Patents are granted, not for ideas merely, however valuable, 
but for things or modes. This explains from one point of view 
the common saying that '* principles" are not patentable, i. e., 
they are not patentable as abstracted from means by which 
they are made to answer some useful purpose in the practical 
arts. '^ A mere abstract principle is unsusceptible of appro- 
priation by patent. The applicant must show how the princi- 
ple is to be used and applied to some useful purpose:" Evans 
V. Eaton, Pet. C. C. 341, 342. 

'' In its .naked, ordinary sense, a discovery is not patenta- 
ble. A discovery of a new principle, force or law operating, 
or which can be made to operate, on matter, will not entitle 
the discoverer to a patent. It is only where the explorer has 
gone beyond the mere domain of discovery, and has laid hold 



36 PATENTS, FOR WHAT GRANTED. 

of the new principle, force or law, and connected it with some 
particular medium, or mechanical contrivance, by which, or 
through which, it acts on the material world, that he secures 
the exclusive control of it under the Patent Laws. He then 
controls his discovery through the means by which he has 
brought it into practical action, or their equivalent, and only 
through them. It is then an invention, although it embraces 
a discovery. Sever the force or principle discovered from the 
means or mechanism through which he has brought it into the 
domain of invention, and it immediately falls out of that 
domain and eludes his grasp :'^ Morton v. iV". Y, Eye Infirm- 
ary, 2 Fisher 320. 

The patent in the last-cited case was for the famous and 
valuable discovery of the efifect of sulphuric ether in produc- 
ing nervous quiet and insensibility to pain, especially during 
surgical operations. The specification admitted it to be well 
known that the substance had a peculiar effect upon the nervous 
system, when breathed or introduced into the lungs of an 
animal, but claimed that it had not been known prior to the 
discovery of the patentee that the inhalation of such vapors 
would produce insensibility to pain. This, the specification 
stated, was the discovery •, and the combining it with, or apply- 
ing it to, any operation of surgery, constituted the invention, 
no special or new means of administering the vapor being 
claimed. 

The court said, '' it is not important to inquire here whether 
this was the discovery of an increased and more perfect effect, 
or of an entirely new effect. The effect discovered was prO' 



DISCOVERIES — PRINCIPLES. 37 

duced hy old agents ^ operating by old means upon old subjects. 
The effect aloDe was new, and to that only can the term dis- 
covery apply." '^ The inhalation of the ethers had long been 
known. By increasing their quantity it was discovered that a 
new or more complete effect was produced by which the sub- 
ject was rendered wholly insensible. This can be no more 
patentable than the discovery that increased quantity of liquors 
taken into the stomach would produce a like result. In both 
cases there is only a naked discovery of a new effect, resulting 
from a well-known agent, working by a well-known process. 
The effect is a temporary suspension of sensibility and motion 
in the animal body. Here what is new in the alleged inven- 
tion begins and ends. The fact that the surgeon can operate 
upon the body in the condition to which it is thus reduced, 
forms no part of the invention or discovery. ^^ 

This case, as thus presented in the opinion of the court, 
furnishes £i forcible illustration of the case of an abstract dis- 
covery, most valuable, yet not patentable. That in a certain 
general sense it was an improvement in the art of surgery, in 
the same sense that an improved lancet or saw might be, did 
not avail, for, as pointed out by the court, the patentability 
of an invention or discovery must depend upon its intrinsic 
novelty, irrespective of the use to which it may be applicable. 
" It can borrow no element of patentability from the art in 
which it is designed to be used, except the element of utility. 
The sole element of novelty in the case, therefore, was the dis- 
covery of the new or greater effect produced, not by any new 
instrument by which the agent is administered, nor by any 



38 PATENTS, FOR WHAT GRANTED. 

different application of it to the body of the patient, but simply 
by the inhalation of an increased quantity of the vapor/' 
*^ Even this quantity is to be regulated by the discretion of the 
operator and may vary with the susceptibilities of the patient 
to its influence. It is nothing more in the eye of the law, than 
the application of a well-known agent, by well-known means, 
to a new or more perfect use, which is not sufficient to support 
a patent." 

The doctrine seems to be indicated in this decision that 
a patentable discovery must be one which also involves inven- 
tion in the sense of devising either new means or some special 
adaptation of existing means for the practical application of 
the discovery. 

But in Foote v. Silsbi/, 2 Blatch. 260, the court said : 
^' Where a party has described a new application of some pro- 
perty in nature never before known or in use, by which he has 
produced a new and useful result, the discovery is the subject 
of a patent independent of any new or peculiar arrangement 
of machinery for the purpose of applying the new property in 
nature ; and hence the inventor has a right to use any means, 
old or neio, in the application of the new property to produce 
the new and useful result, to the exclusion of all other means. 
Otherwise a patent would afford no protection to an inventor 
in cases of this description ; because, if the means used by him 
for applying his new idea must necessarily be new, then, in 
all such cases, the novelty of the arrangement used for the 
purpose of effecting the application would be involved in every 
instance of infringement, and the patentee would be bound to 



PRINCIPLE, FIRST APPLICATION OF. 39 

make out not only the novelty in the new application, but also 
the novelty in the machinery employed by him in making the 
application. Novs^, in this case, as I understand the claim of 
the patentee, h^ claims the application of the principle of ex- 
pansion and contraction in a metallic rod to the purpose of re- 
gulating the heat of a stove. This is the new conception 
which he claims to have struck out ; and, although the mere 
abstract conception would not have constituted the subject- 
matter of a patent, yet when it is reduced to practice by any 
means old or new, resulting usefully, it is the subject of a 
patent, independently of the machinery by which the appiica- 
cation is made. I think, therefore, that in examining the first 
question presented to you, you may lay altogether out of view 
the contrivance by which the application of the principle is 
made, and confine yourselves to the original conception of the 
idea carried into practice by some means ; hut whether the 
means be old or new is immaterial^ for although old means he 
used for giving application to the new conception^ yet the patent 
excludes all persons other than the patentee from the use of those 
means and of all other means in a similar application.^^ 

Similar doctrine has been enunciated by the English courts 
in Househill Company v. Neilson, Webster's Patent Cases, and 
in sundry other cases. 

In Parker v. Hulme, 1 Fisher 44, the court said : ** The pro- 
pulsive effect of the vortical motion of water in a re-action 
wheel, operating by its centrifugal force, and so directed by 
mechanism as to operate in the appropriate direction, is patent- 
able." He who first discovers that a law of nature can be ap- 



40 PATENTS, FOR WHAT GRANTED. 

plied to produce a particular result, and having devised machin- 
ery to make it operative, introduces it to the knoAvledge of his 
fellow men, is a discoverer and inventor of the highest grade. 
lie may assert and establish his property, not only in the 
formal device for which mechanical ingenuity can at once, as 
soon as the principle is known, imagine a thousand substi- 
tutes ; but in the essential principle which his machine was 
the first to embody, to exemplify, to illustrate, to make opera- • 
tive and to announce to mankind. This is not to patent an 
abstraction, but rather the invention as the inventor has given 
it to the world in its full dimensions and extent. 

In Detmold v. Reeves^ 1 Fisher 127, the court said : ^'he who 
has discovered some new element or property of matter, may 
secure to himself the ownership of the discovery as soon as he 
has been able to illustrate it practically and to demonstrate its 
value. His patent in such case will be commensurate with 
the principle which it announces to the world, and may be as 
broad as the conception itself 

Narrower doctrine, however, appears in the opinion of the Su- 
preme Court in Le Roy v. Tatham^ 14 How. 175. *^ A principle in 
the abstract,^' said the court, " is a fundamental truth, an origi- 
nal cause, a motive ; these cannot be patented, as no one can 
claim in either of them an exclusive right. Nor can an exclusive 
right exist to a new power, should one be discovered, as steam, 
electricity, or any other power of nature. In all such cases 
the processes used to extract, modify and concentrate natural 
agencies, constitute the invention. The elements of the power 
exist 5 the invention is not in discovering them, but in applying 



PRINCIPLE, FIRST APPLICATION OF. 41 

them to useful objects. The rigid of the inventor is secured 
against all who use the same mechanical power^ or one substan- 
tially the same/^ 

In O'Beilly v. Morse^ 15 How. 120, the eighth claim of the 
patent was, " I do nob propose to limit myself to the specific 
machinery, or parts of machinery, described in the specification, 
the essence of my invention being the use of the motive power 
of the electric or galvanic current, which I call electro-mag- 
netism, however developed, for marking or printing intelligible 
characters, signs or letters, at any distances, being a new appli- 
cation of that power, of which I claim to be first inventor or 
discoverer." In regard to this claim the court said, *' The pro- 
sions of the Acts of Congress in relation to patents may be 
summed up in a few words. Whoever discovers that a certain 
useful result will be produced in any art, machine, manufac- 
ture or composition of matter, by the use of certain means, is 
entitled to a patent for it, provided he specifies the means used 
in a manner so fall and exact that any one skilled in the 
science to which it appertains can, by using the means he 
specifies, without any addition to or subtraction from them, 
produce precisely the result he describes. And if this cannot 
be done by the means he describes, the patent is void, and if it 
can be done, then the patent confers on him the exclusive right 
to use the means he specifies to produce the result or effect he 
describes and nothing more. And it makes no difference, in 
this respect, whether the effect is produced by chemical agency 
or combination, or by the application of discoveries or princi- 
ples in natural philosophy, known or unknown before bis in- 



42 PATENTS, FOR WHAT GRANTED. 

vention, or by machinery acting altogether on mechanical 
principles. In either case, he must describe the manner and 
process as above mentioned, and the end it accomplishes. And 
any one may lawfully accomplish the same end without infring- 
ing the patent, if he uses means substantially different from 
tbose described. Indeed, if the eighth claim of the patentee 
can be maintained, there was no necessity for any specification 
further than to say that he had discovered that, by using the 
niotive-power of electro-magnetism, he could print intelligible 
characters at any distance. We presume it will be admitted 
on all hands that no patent could have issued on such a speci- 
fication. Yet this claim can derive no aid from the specification 
filed. It is outside of it, and the patentee claims beyond it. 
And if it stands, it must stand simply on the ground that the 
broad terms above mentioned were a sufficient description and 
entitled him to a patent in terms equally broad. In our judg- 
ment, the Act of Congress cannot be so construed.'^ 

If, as the two decisions last quoted appear to hold, the dis- 
coverer of a new application of a principle, force, or property 
of matter to a useful purpose in the arts, can obtain a patent 
only for the means or mode which he may have described for 
effecting such application, or their mechanical equivalents, it is 
pretty clear that the Patent Laws are inadequate for the pro- 
tection of some of the very highest and most valuable concep- 
tions. 

The consequence of such doctrine must be as indicated in 
Silsbi/ V. Foote, that ^' there must be novelty in the means, or 
the patent will be bad ; while, if the means be new, the patent 



PRINCIPLE, FIRST APPLICATION OF. 43 

is effective only to protect the discoverer in a monopoly of " the 
formal device for which mechanical ingenuity can at once, 
as soon as the principle is known, imagine a thousand substi- 
tutes/' 

If the particular means or method employed be old in itself, 
the patent may be obnoxious to the charge of being merely the 
putting of an old thing to a new use. Thus in the case of Le 
Roy V. TatJianij it appeared that the mechanism which the 
patentees used for the practical application to the art of mak- 
ing lead pipe of their valuable discovery of a new property in 
lead, was not in itself substantially new. 

A good illustration of the point under discussion is furnished 
by the patent in McChirg v. Kingslaiid, 1 Howard 202, which 
was for a mode of casting chilled rollers and other metal 
cylinders and cones. In casting such articles it was desirable 
to give to the molten metal, as it was introduced into the mould 
a whirl or rotary motion, so that the dross would be thrown 
into the centre instead of the surface of the cylinder. 

This effect it was customary to produce by stirring the 
molten metal. But the inventor, a workman in a foundry, 
observed, in pumping water into a bucket, that the water en- 
tering at and tangent to the circle of the bucket acquired a circu- 
lar motion, diminishing as it approached the centre, where bits 
of straw and other lighter materials would be concentrated. It 
struck him that the application of this principle or law of na- 
ture might be beneficially made to the casting of rolls by intro- 
ducing the metal at the bottom of the mould at a tangent. The 
thought once suggested required little or no skill or invention 



44 PATENTS, FOR WHAT GRANTED. 

to put into practice; all that was required was to change the 
direction of the gate which conveyed metal to the mould from 
a horizontal or perpendicular position to an angular one, but 
it was none the less a striking and valuable improvement in 
the art of casting rolls, and the patentable element was the 
application of this natural law to a useful purpose in the arts. 

The mere mechanical change involved in carrying out this 
conception, might be regarded as not in itself constituting 
invention, the application of the principle was the only sub- 
stantial novelty. Clearly, in such a case, to require that the 
means employed shall themselves be novel and patentable, 
and that the claim shall be confined to them, would operate 
very unjustly. 

The doctrine most consonant with the general object and 
spirit of the Patent Law would seem to be that in cases involv- 
ing the discovery and first application of a particular princi- 
ple to the efiecting of a useful result in the arts, there should 
be virtually a patent for the application of the principle, as it 
is expressed in the English case of Forsyth v. Riviere, Web. 
P. R. 97 : "A person who discovers a principle, and also some 
mode of carrying that principle into practice so as to produce 
or attain a useful effect or result, is entitled to protection 
against all other modes of carrying the same principle into 
practice for obtaining the same effect or result.'^ 



MACHINES, ARTS, PROCESSES. 45 



CHAPTER IV. 

For what Patents are Granted. 

Abstractions are not patentable, whether they be termed 
"principles," " functions'^ or modes of operation. Thus in 
Burr V. Duryee, 1 Wallace 531, the claim of the patent was for 
*' the mode of operation, substantially as herein described, 
of forming bats of fur fibres of the required varying thickness, 
from brim to tip, which mode of operation results from the 
combination of the rotating picking mechanism, or the equiva- 
lent thereof, the pervious, ' former,' and its exhausting mechan- 
ism, or the equivalent thereof, and the means for directing the 
fur-bearing current, or the equivalent thereof, as set forth. ^' 

The Supreme Court commented upon this form of claim as 
*^ an attempt to convert an improved machine into an ab- 
straction, a principle or mode of operation, or, a still more 
vague and indefinite entity, an idea." 

The actual invention was an improved machine for making 
hat bodies, and the court said '' a machine is a concrete thing, 
consisting of parts, or of certain devices and combinations of 
devices. The principle of a machine is properly defined to be 
its. mode of operation, or that peculiar combination of devices 
which distinguish it from other machines. A machine is 



46 PATENTS, FOR WHAT GRANTED. 

not a principle or an idea. Because the law requires a patentee 
to explain the mode of operation of his peculiar machine, 
which distinguishes it from others, it does not authorize a 
patent for a mode of operation as exhibited in a machine/' 

In considering whether in any given case there is a patenta- 
ble invention, or assuming that there is such, in what way 
it is to be claimed, great care and discrimination are very 
frequently required. 

The classification of the statute is any new and useful art, 
machine, manufacture, or composition of matter, or improve- 
ment thereof. The subject of a patent must be either a new 
thing, or a new mode of action, in the practical arts, not an 
abstract result, effect or function. 

What are termed functional claims, i. e., claims for the 
necessary functions of specified devices, or combinations of 
devices, are bad. If the devices, or combinations, be new, they 
are the proper subjects of claim; in such a case function or 
effect is the consequence, not the substance, of the invention. 
" It is for the discovery of some practical method or means of 
producing a beneficial result or effect that a patent is granted, 
and not for the result or effect itself:" Corning v. Burden^ 15 
Howard 268. 

Portions of this decision have been construed to mean that 
there cannot be a patentable mechanical process ; that if a re- 
sult is effected by mechanism, the patent must necessarily be 
for the machinery. From this it would necessarily follow that, 
however useful the result, and novel the process in itself, if 



DOUBLE USE. 47 



the machinery were not substantially new, there could be no 
patent. But a process may be invented which, while involving 
the use of some, may be effected, by a variety of mechanism, 
or which, while possible to be carried on by hand, may be more 
advantageously effected by machinery. That such processes, 
to which particular mechanism, old or new, may be incidental, 
are patentable, irrespective of the machinery employed, cannot 
be doubted. And there seems to be no good reason why a 
process, which may involve the use of particular old mechan- 
ism, being in fact the case of a new use of old machinery, 
should not be patentable. It is plain that in such a case there 
cannot be a patent for a machine, or improvement thereof, and 
the only alternatives therefore are, that a discovery or inven- 
tion of perhaps the greatest merit and importance, must go 
unrewarded, or the patent must be for a process, or rather for 
an improvement in that art to which the actual discovery may 
relate. 

At this point, we naturally come to the consideration of ^ 
most important question, that of the patentability of a new 
use of an old thing, or rather of the use of an old device, ma- 
chine or process for the attainment of a new result. This 
involves what is known as the doctrine of '' double use." 

The doctrine of double use is illustrated by the case of Hoive 
V. Abbott^ 2 Story 190, The claim of the patent was for a pro- 
cess of preparing a durable curling " palm leaf or brub grass 
by reducing the leaf to small filaments or fibres, and likewise 
spinning, baking or steaming and twisting the same." 

The defendant used a portion only of the whole process 



48 PATENTS, FOR WHAT GRANTED. 

claimed, and it was proved that the same process, so far as 
regarded the part of it used by defendant, had, prior to the 
patentee's invention, been applied to hair-stuffing for mattresses. 
The court held that the mere application of an old process to 
the manufacture of an article to which it had never been ap- 
plied is not a patentable invention, adding that it was precisely 
the same as if *' a coffee-mill were for the first time used to grind 
corn." In Bean v. SmaUwood, 2 Story 408, the court said *' a 
machine, apparatus or other mechanical contrivance, in order 
to give the party a claim to a patent therefor, must in itself be 
substantially new. If it is old and well known, and applied to 
a new purpose, that does not make it patentable, A cotton- 
gin apparatus, applied without alteration to clean hemp, would 
not give a title to the gin as new." 

Where the invention consisted in introducing a wire into the 
head of a paint-can, to give strength and prevent the walls 
from collapsing, and a similar wire was proven to have been 
previously used in ice-cream freezers, the court remarked that 
*' if a can so constructed was old as a structure, it was of no con- 
sequence what substance was or was not intended to be car- 
ried or contained within it :" Brown v. Hallj 3 Fisher 531. 

Patents are granted for new ** things" or *' modes of action" 
and not for the particular result or effect which the patentee 
may contemplate attaining thereby. The inventor of a ma- 
chine has made it for all the uses to which it is applicable, and 
no one can obtain a new patent for the machine by applying 
it to a new use : Conover v. Roach, 4 Fisher 12 ; Woodman v. 
Simpsonj 3 Fisher 98 ; but in this last case the court took 



DOUBLE USE. 49 



occasion to suggest that, though a party who should discover, 
for example, that a machine for rubbing or pebbling leather 
would be equally good to rub pasteboard or something else, 
could not therefore obtain a patent for a new machine ; he 
might perhaps obtain a patent for an improvement in the art 
of manufacturing pasteboard. 

The proposition, that to use a machine for a different pur- 
pose from that for which it has before been used, does not make 
the machine a new one, in a patentable or any other sense, is 
obvious enough, and even when changes in or additions to the 
machine are made, to adapt it to its new use, they must be 
such as to involve in themselves the exercise of invention, as 
distinguished from ordinary skill and judgment, to afford basis 
for a " machine " patent. 

If a machine, although designed to separate smut from wheat, 
embodies the principle of a machine afterwards patented to 
separate flour from bran, and without the exercise of invention 
could be changed so as to perform the same functions as the 
latter, in substantially the same way, the patent would be void : 
Swift V. Whisen, 3 Fisher 343. 

That is to say, the particular use to which it may be put has 
no bearing whatever upon the patentability of a machine ; that 
must depend upon the essential novelty of its construction and 
mode of operation. 

In Tucker v. Spalding^ 0. G. vol. 1, 144, the patent was for an 
improvement in saws, and consisted substantially in the use of 
detjachable teeth, secured in sockets in the saw plate. A patent 
had previously been granted for a new and useful method of se- 

4 



50 PATENTS, FOR WHAT GRANTED. 

curing cutters to rotary disks for the purpose of cutting tongues 
and grooves, mortices, &c., the mode of attaching the cutters 
being substantially the same as plaintiflPs. The Circuit Court 
rejected this patent as evidence of prior invention, seemingly on 
account of the different use, and because no mention was made 
in the prior patent of the adaptability of the instrument as a 
saw. But the Supreme Court said, ''if what it actually did is 
in its nature the same as sawing, and its structure and action 
suggested to the mind of an ordinarily skilful mechanic this 
double use, to which it could be adapted without material 
change, then such adaptation to the new use is not a new in- 
vention," and this, as a question of fact, should have been 
submitted to the jury. 

In Piper v. Moore et al.^ 0. G. 4, a claim for preserving 
fish or other articles in a close chamber by means of a freezing 
mixture, having no contact with the atmosphere of the pre- 
serving chamber substantially as set forth, was held to be an- 
swered by a process in previous use for preserving ice-cream 
by the means and under the conditions specified. 

In N. W, Fire Extinguisher Co. v. Philadelphia Fire Extin- 
guisher Co, 0. G., vol. 6, 34, a patent for apparatus in which 
the acid and alkaline solutions for forming carbonic acid gas 
were kept separate until required to extinguish a fire, when 
they could be readily nringled, was held void on its appearing 
that similar apparatus had been employed in soda fountains 
for the supply of beverages. 

But it is by no means the case that there cannot be a patent 
for the use of an old contrivance for a new purpose, under any 



NEW USE OF OLD SUBJECTS. 51 

circumstances, or that all such cases come in the category of 
*' double use." 

A mode of distinction between such cases as are patentable 
and such as are not is indicated in Tucker v. Spalding. If what 
the machine or process did before was in its nature the same 
as the new use, and the character of the machine or process 
be such as to suggest to the mind of one skilled in the art adapt- 
ability to the new use without material change, then such 
adaptation is not a patentable invention. If there be a mate- 
rial change in the process or machine to adapt it to its new use, 
there is patentable invention, and in judging as to what may 
be a material change in such cases, attention being had to the 
essentiality of the change to effect the new purpose, and appa- 
rently slight departure from, or addition to, the old conditions 
of the machine or process may confer patentability. 

But the use of old machines or processes, without material 
change, may it seems be patentable as an improvement in an 
art, if the new use be not so analogous to the old as to be 
within the judgment of one skilled in the art. 

"' To support the argument of non-patentability of a process 
by reason of double use, it must be shown that the process de- 
scribed in the specification was known as a process before the 
patent was issued, and that it had been applied in the same 
way to some use cognate to that to which the patentee applies 
it:-' Roberts v. Dickey, 1 0. G. 4. 

In the case of The National Filtering Oil Co. v. Arctic Oil 
Co., 1 Fisher 514, a patent for refining coal oil or petroleum by 
filtering it through bone-black was sustained, notwithstanding 



52 PATENTS, FOR WHAT GRANTED. 

prior printed publications stating that animal charcoal was 
useful for rendering filthy water inodorous 5 and for depriving 
rancid oils of smell and taste ; and for removing color from 
water or oils, since — said the court — it was impossible to tell, 
without experiment, whether coal oil or petroleum could be 
filtered through bone-black at all, much less so as to produce 
a useful efi'ect. 

This case may seem to carry to an extreme point the patenta- 
bility of the application of an old thing or process to a new 
use. 

Where old machines or processes are used to produce a new 
efi'ect differing in kind from any produced before by the same 
or similar machines or processes, the essence of the discovery 
or invention is evidently in the new application, and the case 
is one of a new art, or an improvement in an art. To many 
such cases the term " new process'' is applied, so that this 
word is made to signify not a " mode of treatment" intrinsically 
new, but " a mode of treatment new as regards the particular 
art concerned, or material dealt with." 

Questions somewhat similar are presented where the alleged 
novelty of an invention consists in the substitution of one 
material for another, in the construction of some known arti- 
icle of manufacture, or device. 

In Hotchkiss v. Greenwood^ 11 Howard 266, the patented 
invention as claimed was the manufacturing of knobs, attached 
to their spindle in a particular way, of potter's clay, or any 
kind of clay used in pottery, and shaped and finished by 
moulding, turning, burning and glazing. The only novelty 



SUBSTITUTION OF MATERIAL. 53 

involved was the substitution in the manufacture of door-knobs 
of a particular construction, of potter's ware or procelain for the 
glass, wood, brass and other materials previously used for the 
purpose. 

The mode of attaching the knob to the spindle appeared to 
be old in itself, and it also appears that other construction of 
door-knobs had previously been made of porcelain. The Su- 
preme Court held that the patent did not disclose a patentable 
invention, although the change of material produced a better 
and cheaper knob. 

In considering the effect of this case, however, it is to be 
observed that the patentee does not seem to have had the merit 
of being the first to suggest the applicability of pottery ware 
or porcelain to the manufacture of any kind of door-knobs, 
but only to knobs constructed or rather attached to their spin- 
dle in a particular way, which way was old. 

In Hicks v. Kelsey^ 18 Wallace 670, the patent was for an 
improved wagon reach. Previously these had been made of 
wood, strengthened by straps of iroo. The patentee made the 
curve of his reach of iron, thereby gaining undoubtedly in 
strength, while the ends, for the sake of lightness, were of wood 
alone. The Supreme Court, recognising no substantial change 
in the mode of construction or operation or effect of the reach 
as being- involved in the case, and regarding the alleged inven- 
tion as consisting of the mere substitution of a particular mate- 
rial for another material which had previously been used for 
the same purpose in the same way, held the patent invalid. 

This case may be regarded as going a little farther than 



54 PATENTS, FOR WHAT GRANTED. 

that of HotcJiJciss v. Greenwood, inasmuch as it does not appear 
to have been shown that iron had previously been used in 
any structure of the same class performing a similar office. 

The court said the use of one material instead of another in 
constructing a known machine is in most cases so obviously a 
matter of mere mechanical judgment and not invention, ^' that 
it cannot be called invention unless some new and useful 
result, an increase of efficiency or a decided saving in the 
operation, is clearly attained." 

And, in referring to the case before them, they add, '' some 
evidence was given to show that the wagon reach of the plain- 
tiff is a better reach, requiring less repair, and having greater 
solidity than the wooden reach. But it is not sufficient to 
bring the case out of the category of more or less excellence 
of construction. The machine is the same. Axe-helves made 
of hickory may be more durable and cheap in the end than 
those made of beech and pine, but the first application of 
hickory to the purpose would not therefore be patentable." 

It is clear that to make the substitution of one material for 
another in a given structure patentable, there must be some- 
thing more than a mere substitution, some new result beyond 
excellence of construction, and something either in the result 
or mode of application indicative of the exercise of more than 
skillful selection. 

As mere changes of material are not patentable, so also with 
mere changes in the form or structure of machines or device ; 
that is, such changes as are not attended with any new or 
improved result, or do not involve a new mode of operation. 



EQUIVALENTS. 55 



The change may be an improvement in one sense of the word, 
in the same sense that a mere substitution of metal for wood 
may be, i. e., in excellence of construction, but there must be 
something more in order to constitute patentable invention. 

The statute provides for patents for improvements in old 
machines, as well as for machines entirely new. In either case, 
the inventor is entitled to a patent covering not only the pre- 
cise devices or forms which he may specify, but such as can 
be substituted therefor by one skilled in the art, from his know- 
ledge of the art, without the exercise of the inventive facul- 
ties : Johnson v. Root^ 1 Fisher 351 ; Burden v. Corning, 2 
Fisher 447. This is what is called the doctrine of equivalents, 
the word equivalent being used in a broader sense than its tech- 
nical meaning among mechanics. ^* The doctrine of the use 
of mechanical -equivalents is not confined to those elements 
which are strictly such in the science of mechanics. There 
are different well-known devices, any one of which may be 
adapted to effect a given result according to the judgment of 
the constructor. The mere substitution of one of these for an- 
other does not belong to the subject of invention, but of con- 
struction : Foster v. Moore, 1 Curt. 294 ; and in Smith y. Down- 
ing, 1 Fisher 64, mechanical equivalents are defined as meaning 
the substitution of merely one mechanical power for another, 
or one obvious and customary mode for another of effecting a 
like result. 

But in determining what are or what are not mechanical 
equivalents, reference must be had not merely to the function 



56 PATENTS, FOR WHAT GRANTED. 

or office of the machine or device, but to the way in which it is 
designed to perform that function. The ^' principle" of a new 
machine, or of an improvement therein, consists of those pecu- 
liarities of construction and mode of operation which consti- 
tute its distinguishing character, and equivalents must be such 
things as can be substituted without material departure from 
this ^' principle." '^ To assume that every combination of 
devices in a machine which is used to produce the same effect, 
is necessarily an equivalent," is a flagrant abuse of the term 
** equivalent" [Bxirr v. Duryee)^ and in Cahoon v. Ring^ 1 
Fisher 397, an equivalent is defined as meaning *' something 
that does the same thing in substantially the same way." 



COMBINATIONS. 57 



CHAPTER Y. 

For what Patents are Granted. 

Most inventions relating to machines, or improvements in 
machines, as well as many of those which are to be classified 
as '* manufactures/' belong to the class known as combina- 
tions. A machine is essentially a combination of devices, and 
if at all complex in character, as if the functions of a number 
of devices are necessary to produce a given efi"ect upon the 
material which the machine is to operate on, and the material 
is to undergo successive changes from the operation of the ma- 
chine, a number of combinations may be involved in one 
machine. And there may be a combination between several 
machines, as well as between several parts of one machine : 
Barrett v. Eall, 1 Mass. 474 ; Evans v. Eatoii, 3 Wheat. 454. 

A combination in the sense of the patent law does not mean 
simply a collection or aggregation of parts, nor does the mere 
fact that an improved result may follow from a new aggrega- 
tion of old elements or devices make a patentable combination. 

The rule is thus stated by the Supreme Court in Hailes et al. 
v. Van Woermer et al.j 5 0. G. 89; "A new combination is 
patentable if it produces a new result, although all the ele- 
ments were previously known and in use, but the result must 
be something additional to the results which were separately 



58 FOR WHAT PATENTS ARE GRANTED. 

produced complete before by the different parts ; a mere aggre- 
gation of those results is not such a new result, and does not 
render a combination legitimate. No one can prevent others 
from using certain specified devices, either singly or together, 
because he was the first to use them together, unless he thereby 
produced a new and useful result which was due to the joint 
action of the constituent parts, and was not merely an aggre- 
gate of the effects which were produced by those parts when 
operating by themselves.^' 

That is, to bring together the best points of several machines 
or articles of manufacture, so as to produce a machine or manu- 
facture uniting their several excellencies, does not make a 
patentable combination, except some result further than this 
be attained, a result the consequence not of the character of 
the parts individually considered, but of their co-operation. 

" To select the best elements previously embodied in similar 
articles, and embody them in one which is superior only be- 
cause the best elements are united in it, may be a meritorious 
exercise of judgment, but involves no invention ; the whole is a 
mere aggregate of devices, and not a legitimate combination, 
and is not patentable :'' John H. Coes, 6 0. G. 1. 

A patentable combination is one of which the several parts 
co-operate to produce a certain result, not that their operation 
must be simultaneous, but they must co-operate in the sense 
that the function of each part aids and is aided by those of 
the other parts. 

" A combination is legitimate when all the elements co- 
operate in producing a result, and are necessary to it, though 



COMBINATIONS. 59 



their several functions are not performed simultaneously ; if 
performed in immediate succession it is sufficient :" Birdsell v. 
MeDonald et al., Birdsell v. The Ashland Machine Co. et ah, 
6 0. G. 682. 

The doctrine on the subject is clearly stated in Forhush v. 
Cook, 2 Fisher 669. 

" To make a valid claim for a combination, it is not neces- 
sary that the several elementary parts of the combination 
should act simultaneously. If those elementary parts are so 
arranged that the successive action of each contributes to pro- 
duce some one practical result, vrhich result, when attained, is 
the product of the simultaneous or successive action of all the 
elementary parts vievred as one entire v^hole, a valid claim for 
thus combining those elementary parts may be made.^^ That 
is, a patentable combination involves some one result, which 
must be that of the combination as a whole, an entirety. 

A combination may consist of elements themselves new, or 
of some new and some old, or all the elements may be old. In 
either of the first two cases, the new elements may themselves 
be patented, as well as the combination of them ; but in the 
last case there can of course be a patent only for the combina- 
tion. 

Whether, the elements be new or old is not material to the 
question of the patentability of a combination. If the com- 
bination is new, viewing it as an entirety, i. e., if there has not 
exist.ed before an assemblage, similar or substantially so, of the 
same or substantially the same devices, accomplishing the same 



60 PATENTS, FOR WHAT GRANTED. 

or substantially the same result, in the same or substantially 
the same way, there exists a patentable combination. 

As it is expressed in Watson v. Cunningham^ 4 Fisher 528, 
*^ a combination is to be regarded as a unit, and if all its essen- 
tial elements have not before been embodied and employed 
together, it is to be taken as an original invention." 

As has been before observed, a machine or article of manu- 
facture may embrace several combinations, and these may be 
capable either of being used together, or some may be used 
without the others, or with substitutes for them. Although each 
of such combinations may be in itself a patentable improvement, 
yet if all are embodied or susceptible of embodiment in one 
machine, or article of manufacture, they may be included in 
one patent, and made the subject of several claims. 

Although in relation to the question of novelty, a combina- 
tion is to be viewed in its entirety, to ascertain the character 
of that entirety, reference must be had to the character, num- 
ber and mutual relation of its component parts. 

As a patentable combination must have some one given 
result or ofl&ce, which result or office must be the consequence 
of the co-operation of all the parts, the question of identity, or 
difference of two combinations, must depend upon whether 
they bring about the same result, by the co-operation of the 
same or similar parts, so arranged as to co-operate in the same 
or a substantially similar way. 

They may obtain the same result and yet be very different ; 
nor is the possession of similar co-operative parts decisive 



COMBINATIONS. 61 



evidence of identity, for they may be so differently arranged 
as to co-operate differently. 

Thus, inquiry must be directed first to the result, and next 
to the number, character and mutual relation of parts con- 
tributing to the result. A different result indicates different 
means ; but a like result is also consistent with very different 
means, and patents are granted not for results, but for means 
of obtaining them. 

As to the number of parts : a combination of say three ele- 
ments is not the same as a combination which, employing two 
of the same elements, dispenses with the third : Gould v. Rees^ 
15 Wallace 187. 

As to the character and mutual relation of the parts : two 
combinations are not the same, if one substantially differs from 
the other in any one of its parts. 

In Prouty v. Ruggles^ 16 Peters 341, where the patent was 
for the combination of certain parts of a plow, the Supreme 
Court said, " None of the parts are new and none are claimed 
as new, nor is any portion of the combination less than the 
whole claimed as new, or stated to produce any given result. 
The end in view is proposed to be accomplished by the union 
of all arranged and combined together in the manner described, 
and this combination, composed of all the parts mentioned in 
the specification, and arranged with reference to each other, 
and to other parts of the plow in the manner therein described, 
is stated to be the improvement, and is the thing patented. 
The use of any two of these parts only, or of two combined 
with a third, which is substantially different in form, or in the 



62 PATENTS, FOR WHAT GRANTED. 



manner of its arrangement and connection with the others, is 
therefore not the thing patented;" and in Brooks v. Fiske, 15 
Howard 212, the court said, " if a combination has three dif- 
ferent known parts, and the result is proposed to be accom- 
plished by the union of all the parts arranged with reference 
to each other, the use of two of these parts only, combined 
with a third which is substantially different in the manner of 
its arrangement and connection with the others, is not the same 
combination and no infringement." And in Fames v. Godfrey^ 
1 Wallace 79, '' where a patent is for a combination of distinct 
and designated parts, it is not infringed by a combination which 
varies ffora that patented in the omission of one of the opera- 
tive parts, and the substitution therefor of another part, sub- 
stantially different in construction and operation, but serving 
the same purpose." 

These decisions show that a patentable combination implies 
a given number of parts of a given character, co-operating in 
a given way to the attainment of a given result. And as 
there cannot be a patent for a result, neither can there be a 
patent covering any and every mode of combining certain 
elements for the attainment of a result. In Case v. Browrij 2 
"Wallace 230, the claim was *' in combination with a corn-plant- 
ing machine that is constantly moved over the ground and 
drops the grain intermittently, the so combining of two slides, 
one of which is at or near the said hopper, and the other at or 
near the ground, or their equivalents, with a lever, as that the 
operator or attendant on the machine can open said slides at 



COMBINATIONS. 63 



the proper time to deposit the seed and prepare a new charge 
by the double dropping herein specified.'' 

Literally construed, this claim would have covered any mode 
of combining the two slides with the corn-planting machines and 
with any lever, so as to produce the effect or result described. 
The Circuit Court, however, charged that the claim was to be 
construed as for a combination, of which a lever of the de- 
scribed mode of connection and operation with the slides was 
an essential part, and this ruling was affirmed by the Supreme 
Court. 

In brief, a patentable combination must be a definite or- 
ganism of definite parts, having a defined relation to and mode 
of co-operation with each other. 

It is not to be understood, however, that the patentee of a 
combination is confined to an assemblage of the precise parts 
which he may have specified. He is entitled to the equivalents 
of those parts, and what is understood by the word " equiva- 
lents" in this connection is thus stated by the Supreme Court, 
in Seymour v. Osborne, 11 Wallace 876, and Gould v. Bees, 15 
Wallace 187 : " A combination is not infringed unless by a ma- 
chine containing all the material ingredients patented, or 
proper substitutes for one or more of such ingredients, well 
known to be such at the time when the patent was granted. 
An alteration in a patented combination, which merely substi- 
tutes another old ingredient for one of the ingredients in a 
patented combination, is an infringement of the patent if the 
substitute performs the same function, and was well known at 
the date of the patent as a proper substitute for the omitted in- 



64 PATENTS, FOR WHAT GRANTED. 

gredient ; but the rule is otherwise, if the ingredient substituted 
was a new one, or performs a substantially different function, 
or was not known at the date of the plaintiff's patent as a proper 
substitute for the one omitted from his patented combination." 

Stated briefly, this doctrine of equivalents, as applied to the 
case of a combination, appears to be that devices which will 
perform substantially the same function in the combination 
are equivalent, providing they are known as such at the time 
of the patent. Devices which will not perform the same func- 
tion in the combination are not equivalents, whether known 
or not at the time of the patent, nor unless known at that time 
will they be regarded as equivalents, though they perform the 
same function. 

In the language of the court, in Gould v. Rees, ''inventors 
of combinations may claim equivalents as well as any other 
class of inventors, and they have the same right to suppress 
every subsequent improvement, not substantially different 
from what they have invented and secured by Letters Patent ; 
but they cannot suppress subsequent improvements, which are 
substantially different from this invention, whether the new 
improvement consists in a new combination of the same 
ingredients or of some newly-discovered ingredients, or even 
of some old ingredients performing some new function, not 
known at the date of the Letters Patent, as a proper substitute 
for the ingredient withdrawn." 

In speaking of the result or function of a combination, a com- 
plete or commercially useful result is not necessarily meant. 
'' The patentee of a machine by which an article is fabricated 



ARTICLES OF MANUFACTURE. 65 

may distribute the several mechanisms embodied in it into 
groups, each embracing such as co-operate in producing a 
definite eiBPect upon the material, although no one of them is 
capable of any commercially useful result by itself; and the 
conjoined operation of every one or an equivalent is necessary 
to accomplish the object :" Wells v. Jacques j 5 0. G. 364. 

Thus, as stated at the beginning of this chapter, a number 
of combinations contained in one machine or organization may 
be made the subjects either of several patents or of several 
claims in one patent. 

Patentable manufactures, i. e., articles of manufacture, are 
8uch as in themselves involve invention and novelty, and are 
distinguishable from other manufactures of the same class 
Their patentability in no way depends upon the method of pro- 
ducing them ', that may be old, but if the article produced 
possesses in itself novel characteristics, and is useful, it may 
be patented. Lacking these requisites, however, it cannot be 
patented as a new thing, because it may have been produced 
by new instrumentalities or process. Product and process are 
entirely independent, and neither can borrow patentability 
from the other, but must, to be patentable, possess the requisite 
properties of novelty, utility, and invention, as distinguished 
from mere, s^ill or judgment. So the greater utility of an 
article of manufacture, unless that utility depend upon defina- 
ble intrinsic differences of structure or composition, is not 
evidence of patentability. 

In the case of The Milligan <So Higgins Glue Company v. 
5 



66 • PATENTS, FOR WHAT GRANTED. 

Upto7ij 6 0. G. 837, the patent was for '^ comminuted glue," 
that is, glue reduced by a process of disintegrational fine cutting 
akin to rasping, into particles thin, scale-like, curling, and 
thoroughly fractured, so as to form a loose uncompact mass, 
readily permeable to and solvent in hot water. The court 
held that there was no invention in merely reducing an article 
of bulk to minute fragments, and said that, in order to sustain 
a patent for a manufacture, it is essential that invention or dis- 
covery must be exercised in producing it. It is not enough 
that it is a new article of commerce. And in the case of The 
Union Paper Collar Company v. Van Dusen, where the patent 
claimed as a new article of manufacture, a collar made of long 
fibre paper, the court said, " articles of manufacture may be 
new in the commercial sense when they are not new in the 
sense of the Patent Law. New articles of commerce are not 
patentable as new manufactures, unless it appears in the given 
case, that the production of the new article involved the exer- 
cise of invention or discovery beyond what was necessary to 
construct the apparatus for its manufacture or prodi^ction." 
In this case the collar did not difier in form, structure or ar- 
rangement froni collars previously made of linen, paper or 
other fabrics ; the character of paper was the only novelty, and 
that it appeared the patentee did not invent. 

In Draper v. Hudson^ 3 0. G. 354, it was held that a patent 
for an article of manufa.cture cannot be sustained on the ground 
that it was fabricated by new and improved machinery ; but 
that the manufacture must be a new and improved thing in 
itself, possessing novelty of its own, independent of the devices, 
processes or arts by which it was produced." 



COMPOSITION OF MATTER. 



An article of commerce, then, which does not differ from 
others of its class, save in the different mode of producing it, 
is not patentable as a new article of manufacture. It may be 
better in a commercial sense, more presentable, stronger or 
cheaper ; yet it will not be patentable, unless it possesses sub- 
stantial intrinsic differences indicating the exercise of inven- 
tion or discovery beyond that necessary to provide the means 
of producing it. 

If the novelty be in the means or mode of production only, 
that, if anything, will be the subject of a patent. 

This rule applies equally of course to the class of ^' manufac- 
tures" to which the law specially refers as ^' new or improved 
compositions of matter." 

This class of subjects bears close analogy to the class of 
combinations. A composition of matter may consist of old or 
new materials, its patentability depending upon its novelty and 
utility, when considered as a unit. But the character and 
limits of a patent for a composition of matter are to be deter- 
mined as in the case of any other combination, from a consi- 
deration of the characteristics or result of the composition, and 
the number, character and mutual relation of parts to which 
the result is due. Thus one composition may patentably differ 
from another, either in respect of the character, or the number 
of its ingredients, or in their relative proportions, imparting 
appreciably different characteristics to the composition. 

The resqlt is first to be looked to, and then the means, i. e., 
the elements and their relations, to which this result is due. 
Upon these considerations depend the character and scope 



68 PATENTS, FOR WHAT GRANTED. 

of a patent for a ^' composition of matter/' There cannot 
be a patent covering any and every mode of combining certain 
elements to form a composition of matter ; the patent must be 
limited to a composition of elements of substantially such kind, 
numbers and relative proportions, as the inventor has found 
essential to give the composition, as a whole, its peculiar char- 
acteristics : Francis et al, v. Mellor et al, 10. G. 48. 

And a patentable improvement upon existing compositions, 
patented or not patented, may consist in a substantial varia- 
tion, (that is, a variation effecting a result substantially dif- 
ferent, or in a substantially different way), either in the char- 
acter, number or relative proportions of ingredients. 

The doctrine of equivalents, however, is applied to this — as 
to other classes of patentable subjects — mere formal changes 
are not invention. Where a patent is granted for a composi- 
tion made of several ingredients, it covers known equivalents 
of each of the ingredients, i. e., equivalents known at the time 
of the patent, and an equivalent of any substance is another 
substance, having similar properties, and producing substan- 
tially the same effect : Matthews v. Skates^ 1 Fisher 602. The 
words '' similar properties " are used here, not in a general 
sense, but mean similar properties in respect to effect upon, 
or with, the other elements of the composition. 

Recurring to the fact, that " improvements " upon existing 
subjects are patentable, it only remains to add that it is im- 
material whether such existing subjects are themselves patented 
or not. But a patent for an improvement, must be distinctly 



IMPROVEMENTS. 69 



limited to the *' improvement/' and the possession of such a 
patent does not of course confer upon the patentee the right 
to use the thing improved upon, if patented to another, with- 
out that other's consent. And on the other hand, the patentee 
of the original invention, cannot use an improvement thereon 
patented to another, without the consent of the latter. 



70 APPLICATION FOR PATENT. 



CHAPTER VI. 

Applicatio n for Patent. 

Sec. 4886, R. S., which forms the subject of the two pre- 
ceding chapters, as defining to whom and for what a patent 
may be granted, also refers to the conditions : ^' upon pay- 
ment of the duty required by law and other due proceedings 
had." These '' due proceedings," so far as they are to be taken 
by the applicant, will form the subject of the present chapter. 

^' Before any inventor or discoverer shall receive a patent 
for his invention or discovery, he shall make application there- 
for, in writing, to the commissioner, and shall file in the Patent 
Office a written description of the same, and of the manner and 
process of making, constructing, compounding and using it, 
in such full, clear, concise and exact terms, as to enable 
any person skilled in the art or science to which it appertains, 
or with which it is most nearly connected, to make, construct, 
compound and use the same •, and in case of a machine, he 
shall explain the principle thereof, and the best mode in which 
he has contemplated applying that principle, so as to distin- 
guish it from other inventions, and he shall particularly point 
out and distinctly claim the part, improvement or combination 
which he claims as his invention or discovery :" Sec. 4888, R. S. 

The applicant shall also furnish a drawing of the invention, 



WHAT IS REQUIRED OF THE INYENTOR. 71 

where the nature of the case admits of one — the drawing to be 
signed by the inventor, or his attorney in fact, and attested by 
two witnesses : Sec. 4889, E. S. 

Sees. 4890 and 4891, R. S., provides for the furnishing by 
applicant, if the Commissioner require it, of a model of con- 
venient size, in all Cases admitting of representation by model, 
or if the invention be a composition of matter, specimens of 
the composition and of the several ingredients. Models must 
not exceed one foot in length, width or height, unless by spe- 
cial permission of the Commissioner. 

The applicant must also make oath or affirmation that he 
verily believes himself to be the original and first inventor or 
discoverer of the art, machine, manufacture, composition or 
improvement for which he solicits a patent ; that he does not 
know and does not believe the same was ever before known or 
used ; and shall state of what country he is a citizen. This 
oath may be taken before any person within the United States, 
authorized by law to administer oaths, or when an applicant 
resides in a foreign country, before any minister, charge 
d'affaires, consul or commercial agent, holding commission 
under the government of the United States, or before any 
notary public of the foreign country in which applicant may 
be : Sect 4892, R. S. 

To this matter, required by the law to be included in the 
oath or affirmation, the present rules of the office add, that 
*' if the invention has been patented abroad, the inventor wil] 
be required to make oath that, to the best of his knowledge and 
belief it has not been in public use in the United States more 



72 APPLICATION FOR PATENT. 

than two years prior to the application." This rule finds its 
reason in sec. 4887 (R. S.) of the law, which provides that no 
person shall be debarred from receiving a patent for his inven- 
tion or discovery, nor shall any patent be declared invalid by 
reason of its having been first patented or caused to be patented 
in a foreign country, unless the same has been introduced into 
public use in the United States for more than two years prior 
to the application. But every patent granted for an invention 
which has been previously patented in a foreign country shall 
he so limited as to expire at the same time with the foreign pat- 
ent^ or, if there be more than one, at the same time with the one 
having the shortest term, and in no case shall it be in force 
more than seventeen years. 

This section is of special importance to foreign inventors, 
(though applicable of course to any inventor, who may first 
patent his invention abroad), since the terms for which patents 
are granted in foreign counties are (with one exception) shorter 
than the term in the United States. It is important also to 
inventors in such cases to bear in mind the addition which the 
office-rules require to be made to the ordinary oath, in their 



Under the Act of 1861, the law regarding patents for inven- 
tions previously patented abroad was, not as now, that the 
patent should expire with a previous foreign patent, but that 
its term -should be seventeen years from the date of the first 
foreign patent for the same invention. It not infrequently 
happened, however, that, owing to the prior foreign patent not 
being under the notice of the office, the United States patent 



WHAT IS REQUIRED OP THE INVENTOR. 73 

would appear on the face of it, to be granted for seventeen 
years from the date of its issue ; and no doubt there are not 
a few such patents granted prior to July 1870, to which, 
therefore, the prior law and its construction still apply. To 
the owners of such patents, it is important to know, what, if 
any effect the discrepancy between the term for which their 
patents purport to be granted, and that for which they could 
lawfully be granted, may have upon their validity. 

In the case of O^Eeilli/ v. ilforse, 15 Howard 112, decided 
under the law of 1839, in which originated the provision as to 
these cases, the Supreme Court held that a patent was not void, 
because on its face it did not bear the same date with a previous 
foreign patent taken out by the patentee for the same inven- 
tion, but that the monopoly was limited to fourteen years 
(that being the term for which patents were then granted) 
from the date of the foreign patent. 

Patents therefore of the kind referred to have the same force 
and effect as though they were in point of fact dated from the 
date of the prior foreign patent, i. e., they are prima facie 
valid for seventeen years from that date, and no longer. 

"We have then these pre-requisites to the grant of a patent, 
viz. : the payment of fees ; a written application or petition, as it 
is termed ; a specification ; drawing (where possible), model or 
specimens (where possible and required by the Commissioner), 
and oath or affirmation of invention. How far can failure to 
comply with any of these pre-requisites affect the validity 
of a patent granted ? The model or specimens may be dis- 



74 APPLICATION FOR PATENT. 

pensed with by the Commissioner, and it was held in Whitte- 
more v. Cutte7', 1 Gall. 433, that though the oath and pay- 
ment of duty are prescribed by the law, they are not such 
iBssential pre-requisites, that their absence would invalidate a 
patent granted. And, it being the custom to recite in the 
Letters Patent, that the applicant has complied with these, 
and the other pre-requisites, it is held that these recitals, in the 
absence of fraud, are conclusive evidence as to such compliance 
(Seymour v. Osborne^ 11 Wallace 516), and fraud in the appli- 
cation cannot be set up by defendant in an action for infringe- 
ment. 

The court, in Crompton v. Belknap Mills^ 3 Fisher 536, held 
that the fact that a blank form of oath not executed is found 
among the papers of an application cannot overcome the direct 
recital of the Letters Patent, that the oath was taken, or the 
presumption that the requirements of the law were complied 
with in issuing the patent ; and further, that the oath, though 
to be done prior to the granting of a patent, is not a condition 
precedent, failing which the patent must fail. Questions of 
this kind, however, can rarely arise, as compliance with all the 
requirements of the law is a condition precedent to the right 
of the Commissioner to grant a patent, and is so strictly en- 
forced by that officer that the omission of any one of them can 
seldom happen. 

The rules of the Patent Office, copies of which are printed 
for the information of the public, and are to be had upon ap- 
plication to the Commissioner, give ample directions as to the 
preparation of the merely formal parts of the application, the 
making of models, and ih^form of drawings and specifications. 



SPECIFICATION. 75 



As to the substance of the specifications, however, those 
characteristics upon which the validity and value of a patent 
depend, the method of description, and the framing of the 
claims which are to " point out and distinctly claim the part, 
improvement or combination which he claims as his invention 
or discovery, the applicant must use his own judgment or seek 
the aid of parties experienced or skilled in such matters. 

To the subject of the specification we give attention in the 
next chapter. 



76 SPECIFICATIONS AND CLAIMS. 



CHAPTER VII. 

Specifications and Claims. 

As we have seen in the foregoing chapter, the law requires 
an applicant for a patent to file in the Patent OflBce " a written 
description of his invention, and of the manner and process 
of making, constructing, compounding and using it, in such 
full, clear and exact terms as to enable persons skilled in the 
art or science to which it appertains, or with which it is most 
nearly connected, to make, construct, compound and use the 
same." 

A document prepared in accordance with this demand is 
termed a specification, and this must conclude with a claim 
or claims particularly pointing out ^' the part, improvement or 
combination which he claims as his discovery," and must be ac- 
companied and illustrated by a drawing, where the case admits 
of it. 



SPECIFICATIONS. 



The descriptive portion of the specification is a requirement 
based upon the consideration that a patent is in the nature of 
a contract, a sale and purchase of useful knowledge, the pub- 



SPECIFICATION. 77 



lie as purchasers requiring that this useful knowledge shall be 
imparted to it in writing so full, clear, concise and exact, that 
thereby those of its members who may desire to make and use the 
invention, may be fully enabled to do so. In this, as in every 
other portion of the transaction, there must be the most per- 
fect good faith on the part of the inventor. There must be no 
intentional concealment of anything necessary to the perfect 
carrying out of the invention, and no intentional description, 
as necessary to that end, of more than in fact is so. 

Among the special defences which Sec. 4920, K. S., specifies, 
may be made by defendant in action for infringement, is ^' that 
for the purpose of deceiving the public the description and 
specification filed by the patentee in the Patent Office, was 
made to contain less than the whole truth relative to his in- 
vention or discovery, or more than is necessary to produce the 
desired effect." 

But the law does not require that the description shall be 
intelligible to the members of the public generally ; that would 
be an unreasonable and impracticable requirement. The test 
of sufficiency is the ability of those *^ skilled in the art to which 
the invention appertains, or most nearly relates," to "make, 
construct, compound and use the invention,'^ from the descrip- 
tion, without other aid than the exercise of their own ordinary 
skill and judgment, and without experiment. Consequently 
the description need not set forth in detail things which are old 
and within the ordinary knowledge of those skilled in the art ; 
as, for example, in describing an improvement in a machine, 
it is not necessary to describe in detail all the old and well- 



78 SPECIFICATIONS AND CLAIMS. 

known parts of the machine ; such reference only should be 
made to them as may be necessary to make clear the nature 
of and the mode of applying and using the improvement. 
Anything beyond this is prolixity, whereas the law requires 
*' conciseness/' and tends to endanger the interests of the 
patentee by causing that apparent confusion of the old and 
new, which will render a patent invalid. 

The law further requires that " in the case of a machine, the 
inventor shall explain the principle thereof, and the best mode 
in which he has contemplated applying that principle, so as to 
distinguish it from other inventions.'' 

By this word '' principle " is meant the mode of operation 
of the machine, i. e., viewing the work to be done, the manner 
in which the machine performs that work. Two machines, 
effecting the same result by the same mode of operation, are 
in the eye of the law the same, although the devices used may 
be different. Therefore, a machine to be new, as such, must 
involve a new ^' mode of operation" and this " new mode" 
must be explained, so as to distinguish the machine from other 
inventions, i. e., other machines for performing the same work. 
For the same purpose the inventor must also describe the best 
mode in which he has contemplated applying that principle, 
i. e., those particular mechanical devices and the application, 
arrangement or combination of them, which he believes to be 
the best, efficiency and economy being both considered, to 
carry out the new "principle" or mode of operation. 

It is not necessary, if he describe the best, that he should 
also describe others which he has contemplated, but does not 



SPECIFICATION. 79 



consider as good. But the spirit of the law might seem to 
require that if he has devised several plans, embodying the 
same principle or mode of operation, and contemplates them 
as equally good, he should describe them, for the public is 
entitled to not only his best, but his full knovrledge. How- 
ever this may be, it is evidently to his own interest, in such a 
case to describe and show the several modifications which he 
has contemplated. 

The " best'' which the law requires is that which the inven- 
tor has contemplated as such, not necessarily that which may 
in fact be best. The new " principle '^ or mode of operation, 
being clearly given, it is altogether likely that the inventor's 
own further experience, or the experience and skill of others, 
may develop more efficient or more economical devices for car- 
rying out the principle than those Avhich the inventor at the 
time of taking his patent contemplated ; but this, if the inven- 
tor has in good faith given to the public his best knowledge 
at the time, will not affect the validity or scope of his patent. 

The courts construing a patent so that it may stand good 
rather than be destroyed, and may secure to the inventor his 
full apparent right, do not countenance hypercritical readings 
of the inventor's description. Unintentional errors in a part 
of the description are not held fatal, if other parts of it suffice 
to correct such errors ; that the description is good and suffi- 
cient is one of the 'primd facie presumptions arising from the 
grant of a patent, and this presumption can only be overcome 
by positive proof on the part of a defendant who would raise 



80 SPECIFICATIONS AND CLAIMS. 

the objection. Accidental and isolated obscurities or errors 
will not suffice to sustain the objection ; the true question being 
whether from the whole description, taken together, a person 
of ordinary skill in the art, and actuated by an honest desire 
to understand the thing described, could, without other aid than 
that of his own ordinary skill and judgment, ^^make, con- 
struct, compound and use the same." 

But a description, which taken as a whole, is too vague, 
obscure or erroneous to answer this purpose, though uninten- 
tionally made so, is fatal to the patent, though not necessar 
rily to the inventor's right ; for the law has provided for such 
cases, among others, the remedy of " re-issue." 



CLAIMS. 

To dictate or suggest the proper *^ extent" of the claim is no 
part of the Commissioner's duty, further than to see that it does 
not embrace more than appears in view of the prior state of 
the art to have been actually invented by the applicant. That 
his claim shall cover all his actual invention is for the inventor 
himself to see •, a patent being in the nature of a bargain 
between himself and the public, by which he sells them the 
knowledge of an invention, in consideration of a temporary 
exclusive right to use it, it is for him to define just what he 
considers to be the novelty which he sells. 

The public desire, before the grant of a patent, to assure 
themselves as far as possible that they shall not appear to 
have purchased from the patentee, more than was his to sell, 



CLAIMS. 81 



and the Commissioner of Patents is their agent for this pur- 
pose. 

Since, therefore, the sufficiency of his claim to cover all that 
he has invented is properly left to the inventor himself, and 
upon this sufficiency the value of his patent to him mainly 
depends, too great care cannot be taken in framing it. 

In determining the true scope of a claim, however, the courts 
do not construe it merely from its own language, but from that 
language in connection with the body of the description : Tur- 
rill V. Michigan Southern, 1 Wallace 491. 

Thus construing the claim, they will always, if possible, give 
it meaning and effect, and meaning and effect the very fullest, 
consistent with the patentee's apparent right, that by the light 
which the description affords, they can give it. For not only 
will they endeavor so to construe the patent that it shall stand, 
but if possible, so that it shall be effective to protect the whole 
of the patentee's apparent invention. By a liberal construction 
of the whole document together they can find definite signifi- 
cance for an apparently obscure claim, or give a wider construc- 
tion to an apparently limited claim, or to a claim apparently too 
extensive, a more restricted construction than, if taken by itself, 
its mere language would imply. But in doing this they can- 
not of course go beyond what appears on the face of the 
patent. Their liberality must be bounded by the actual con- 
tents of the specification. They cannot ignore what is in the 
specification, nor interpolate anything which it does not con- 
tain. 

The claim serves to define not only the limits, but the class 

6 



82 SPECIFICATIONS AND CLAIMS. 

of the patented invention or discovery claimed by the in- 
ventor as his exclusive property, and great care is requisite to 
so frame it as to cover the whole invention, and in the proper 
way. A real, substantive invention may be left unprotected 
by a claim either too limited, or so framed as improperly to 
define the subject of the patent. Careful discrimination, for 
example, is sometimes necessary to determine whether an in- 
vention is patentable as an improved machine or apparatus, or 
as an improvement in an art. In drafting a claim, reference 
is to be had to the essence of the invention, the feature or 
features constituting its distinguishing characteristic ; if the 
invention is a real, substantive invention, it will have some lead- 
ing feature — the soul of the whole structure or method. 

A patent may contain as many claims, as there may be 
novel points in the art, machine, manufacture, composition of 
matter, or improvement thereof, forming the subject, and each 
claim will rest on its own merits. 

Invalidity of one of several claims does not invalidate the 
patent, which will avail to secure to the inventor all that he 
has rightfully claimed. 

Claims should be reasonably certain ; ambiguity of claim 
may be as fatal to the patentee's right as ambiguity of de- 
scription ; but if of different constructions whereof a claim 
may be susceptible, one which is reasonable will support the 
patent, it will be accepted. 

As to the descriptive portions of the specification, while 
they need not be so particular as to dispense with the exercise 
of skill and judgment on the part of those to whom they are 



83 



addressed, they must be so far particular as to require no 
more than that ordinary skill and judgment to practically 
carry out their directions. 

A description is bad which misleads those skilled in the 
art, either by omitting mention of anything essential to the 
practising of the invention, unless the omission be of matter 
within the knowledge of the workman, or by ambiguity, ren- 
dering it impossible to gather the true meaning of the descrip- 
tion from the document itself, or by positive mis-statement. 

A claim is bad which inseparably confuses the old with the 
new, embracing more than that of which the patentee was the 
inventor, or if it is not susceptible of any definite construction 
consistent with the description, or if it does not define the in- 
vention with due regard to its patentable character. 



84 APPLICATION FOR PATENT. 



CHAPTER YIII. 
Application for Patent. 

The inventor having complied with the requirements which 
the law demands and which are enumerated in Chapter 
VI., it is the duty of the Commissioner of Patents to cause 
an examination to be made of the alleged new invention or 
discovery, and if on such examination it shall appear that the 
claimant is justly entitled to a patent under the law, and that 
the same is sufficiently useful and important to issue a patent 
therefor : Sec. 4893, R. S. 

The duty of examination devolves primarily upon one or 
other of twenty-four officers, termed " Principal Examiners," 
provided for by sec. 430, R. S. 

To each principal examiner, who, in turn, has a number of 
assistants, is intrusted the examination of all inventions of 
certain classes, and under the present system the decisions of 
the examiners, if favorable to the grant of a patent, are prac- 
tically final as far as regards the Patent Office. If, however, 
an examiner rejects an application for any reason what- 
ever, the applicant is notified by a letter, stating briefly the 
reasons of rejection, together with such information and refer- 



PROCEEDINGS IN PATENT OFFICE. 85 

cnces as may be useful in judging of the propriety of renew 
ing his application or of altering his specification, and if, after 
receiving such notice, the applicant persists in his claim for a 
patent, with or without altering his specifications, the case is 
re-examined by the same officer (Sec. 4903, R. S.), who will 
duly reconsider the case in connection with any amendment of 
the specification which the applicant may ofi'er to remove the 
objection, and any argument which he may present, to show 
why the patent should be granted, with or without such amend- 
ment. Such a re-examination may be had, as often as the 
examiner may reject the application, upon new grounds. But 
if he twice refuse a patent upon the same grounds, alleging 
the want of patentability of all or any of the claims made, the 
inventor may, on paying a fee of $10, appeal from his decision 
to an Appeal Board consisting of three officers, and styled the 
Board of Examiners-in-Chief : Sec. 4909, R. S. 

If the Board of Examiners-in-Chief sustain the adverse 
action of the examiner, in whole or in part, the inventor may, 
on paying a fee of $20, appeal to the Commissioner (Sec. 4910), 
and from the Commissioner, if necessary, to the Supreme 
Court of the District of Columbia sitting in banc: Sees. 491 1, 
4912, 4913, 4914, R. S. 

If any of these three tribunals decide favorably to the in- 
ventor, either as to the whole or part of the matter involved 
in the appeal, and the decision be acquiesced in by the in- 
ventor, the case is remitted to the examiner for further action? 
ii^ accordance with the terms of the decision, it being then his 
duty, if it appear that the applicant has complied with all the 



86 APPLICATION FOR PATENT. 

requisitions of the law, to allow a patent, unless he find some, 
new and good ground of rejection, which had formerly e&- 
caped his attention. 

If there be such it is his duty still to refuse the patent, since 
the decision of the higher tribunal is not that a patent shall be 
granted, but that it shall not be refused on the particular 
grounds originally given. 

From such possible new adverse action of the examiner, 
twice repeated, the applicant may, without payment of new 
appeal fees, again resort to the higher tribunals. As a favor- 
able decision on appeal does not necessarily imply the grant of 
a patent, so also an adverse decision, either of the examiner, 
or the appellate tribunals, does not necessarily imply the refu- 
sal of one. The objection of the examiner may go to a part 
only of the whole invention claimed ; that, admitting the appli- 
cant to have a patentable invention, it is not so extensive as 
the claim asserts. 

In such case, if the examiner's objection be sustained on 
appeal, or if the inventor chooses to acquiesce in the decision 
of the examiner without appeal, and to modify his claim by 
striking out a portion of it, or changing its language as may be 
required to remove the objection, it then becomes the exam- 
iner's duty to allow the patent, in accordance with the amended 
specifications. 

It will be seen that the system of appeals which we have 
briefly sketched, is well calculated to prevent an improper re- 
fusal of any claim of invention which the applicant may per- 
sist in, while at the same time, the opportunity which is afforded 



OFFICIAL EXAMINATION. 87 

him to have an adverse action of the primary examiner recon- 
sidered by that officer, in connection with arguments or amend- 
ments, or both, insures him, as far as possible, against the ne- 
cessity for any appeal, to obtain his rights. In fact, the great 
majority of applications are allowed by the primary examiners 
without appeals. 

The appeal system, which we have referred to, is that pro- 
vided mainly for cases in which the objections of the primary 
examiner go to the merits of the application ; that is, where that 
officer denies that a patentable invention is shown, or maintains 
that the invention, as described and claimed, is, in whole or in 
part, old. 

But before he examines an application, with reference to 
these questions, it is his duty to see that the applicant has fully 
complied with the requirements of the law, as to the petition, 
oath, model or specimens, specification and drawing. 

An intelligent examination into the novelty of an alleged in- 
vention, pre-supposes that the specification clearly sets forth 
the object of the alleged invention and the method of attaining 
that object, and distinctly points out the " part, improvement or 
combination," which the applicant claims as original with him. 

If the examiner, looking into these preliminary questions, 
twice rejects an application on the ground that the petition, 
oath, model or specimens, description, claim or drawings, do 
not meet the requirements of the law, an appeal may, without 
payment of additional duty, be taken to the Commissioner. 



88 APPLICATION FOR PATENT. 

The law furnishes the inventor with still another means of 
securing what he may consider to be his right, if the ordinary 
system of appeals fail him. 

Whenever a patent on application is refused,(ybr amj reason 
wliatever)^Q\ihQv by the Commissioner, or by the Supreme Court 
of the District of Columbia, upon appeal from the Commis- 
sioner, the applicant may have remedy by bill in equity, and 
the court having cognisance thereof, on notice to adverse par- 
ties and other due proceedings had, may adjudge that such ap- 
plicant is entitled, according to law, to receive a patent for his 
invention, as specified in his claim, or for any part thereof as 
the facts in the case may appear •, and such adjudication, if it 
be in favor of the right of the applicant, shall authorize the 
Commissioner to issue such patent, on the applicant filing in 
the Patent Office a copy of the adjudication, and otherwise 
complying with the requirements of the law. And in all cases 
where there is no opposing party, a copy of the bill shall be 
served on the Commissioner, and all the expenses of the pro- 
ceeding shall be paid by the applicant, whether the final deci- 
sion is in his favor or not : Sect. 4915, R. S. 

Cognisance of such bills in equity may be had by any of the 
Circuit Courts of the United States, or District Courts having 
Circuit Court powers. If there be an opposing party, as if the 
refusal of a patent has been by the Commissioner of Patents, 
upon his decision of priority of invention in favor of the com- 
plainant's opponent in an interference (see Chap. IX.), in 
which case the successful party in that proceeding should be 
made a defendant in this, and the bill must be brought 



OFFICIAL EXAMINATION. 89 



in the district where the defendant may reside, or in which he 
may be found, and process served on him. 

The adjudication of the court shall authorize the Commis- 
sioner to issue such patent, if any, as the complainant may be 
adjudged entitled to. It is binding upon the Commissioner so 
far only as regards matters passed upon by the court ; he may 
still withhold the patent, if he thinks it his duty to do so for 
any reason not before the court. 



Returning to a consideration of the examining system as 
conducted within the Patent Office. To aid the examiner in 
the discharge of their duties, it is provided (Sec. 486, R. S.) 
that a library of scientific works and periodicals, American 
and foreign (including published foreign patents), shall be 
maintained by purchases, which are provided for by annual 
Congressional appropriations, and the contents of this library 
are also accessible for reference to the public at large. Every 
patent granted is matter of public record, and each examiner 
is furnished for his special reference with printed copies of the 
specifications and draAvings of patented inventions in the 
classes of which he has charge, and such printed copies are 
also provided in sufficient number to be furnished, at a small 
charge, to members of the public desiring them: Sec. 491, R. S. 
Models, specimens, fabrics, manufactures, works of art, as 
they are deposited in the office, are classified and arranged in 
suitable cases, and are (excepting such as relate to pending^ 
or to rejected and abandoned applications for patents) open 
for public inspection. 

The efi'ective official examination as to novelty is, of course, 



90 APPLICATION FOR PATENT. 

limited as a rule to seeing whether or not the thing claimed 
has been '^ patented or described in any printed publication, 
either here or abroad.'' 

Whether there has been prior knowledge or use of the thing 
in this country, without patent or printed publication, it is 
impossible in most cases to undertake to pre-determine. 

The only exception is in the case, infrequent in proportion 
to the number of patents applied for, where two or more 
parties seek patents at or about the same time, for substan- 
tially the same thing, or where an application for patent being 
rejected on a previous American patent for the same thing, 
the applicant demands opportunity to prove his better right. 

In such cases the office is provided with the machinery for 
trying and determining the question of priority of invention, 
through the medium of a proceeding termed an interference. 
See Chap. 9. 

Though in exceptional cases an interference may furnish 
the office with proof of the facts, either that the applicant had 
abandoned his invention, or had allowed it to be in public 
use, or on sale for more than two years before application, 
the Commissioner is not authorized by the law to declare an 
interference for the mere purpose of looking into these ques- 
tions. The only question which he is authorized to determine 
by an interference is that of " priority of invention" in certain 
specified cases, and the law, in specifying this one question, 
impliedly excluded all others. Consequently, while if in an 
interference properly declared for the determination of 
*' priority of invention," an applicant should voluntarily state 



OFFICIAL EXAMINATIONS. 91 

or furnish proof clearly showing that he had abandoned his 
invention, or had allowed it to be publicly used or sold for 
more than two years, the office might and should take cog- 
nisance of such statement or proof, though not relevant to the 
issue of 'Apriority,'' yet applicant could not be compelled to 
make such statement or proof. And any attempt by a party 
to an interference to make use of that proceeding, for the pur- 
pose of extracting from his opponent, or of introducing from 
other sources, evidence on these points, must, it would seem, 
be discountenanced, and such testimony be disregarded, if 
objected to, as an attempt to use an interference for a pur- 
pose not authorized by the law. 

Although preliminary official examination does not and 
cannot extend, as a rule, to the pre-determination of the ques- 
tions of *' prior knowledge, or use or abandonment," or of 
*' public use or sale with the inventor's consent for more 
than two years before his application,^' the real value of the 
system is not thereby the less, but rather the greater. The 
settlement of these questions could be intrusted to the Patent 
Office only by giving it the powers and facilities of a court, 
and the means of settling such disputed questions of fact 
publicly and openly in the modes prescribed for the deter- 
mining of disputed questions of fact. This would be to 
publish every application to the world, which would be op- 
posed to the whole policy of a patent law. An application for 
a patent is a proposition on the inventor's part to sell the 
public a supposed secret, and it would be neither policy nor 
good faith to cause the agents of the public, to whom this- 



92 APPLICATION FOR PATENT. 

supposed secret is intrusted for the purpose of examination, to 
publish it, before the inventor had received the patent, which 
is his price for its publication. 

The justice and value of preliminary official examination 
obviously depends upon its secrecy and its restriction, as far 
as possible, to those questions, with the satisfactory settlement 
of which secrecy is consistent. 

It may be said then, that effective official examination must 
be, as a rule, restricted to the question whether or not the 
invention has been previously patented or published in print, 
here or abroad. 

This is the only question which the inventor could possibly 
undertake to pre-determine for himself, though at incompara- 
ably greater cost, where his situation would allow him to do it 
at all, and with far less certainty than the office can do it. 

Abandonment, or too long public use or sale of his invention, 
it may reasonably be presumed that the inventor will generally 
avoid in his own interest. *' Possible unpublished knowledge 
or use'' by others in this country, before his invention, is a 
risk, which the inventor must unavoidably take with his 
patent, a risk presumably the less, as his invention is the more 
valuable and important, and, therefore, the more likely to 
have been patented, or to have become generally known before, 
if known at all. These, then, may be regarded as excep- 
tional questions, when compared with that to the settlement 
of which preliminary official examination is peculiarly adapted, 
i. e., whether the thing has been before patented or published 
here or abroad •, and, perhaps, the only really well-founded 



OFFICIAL EXAMINATION. 93 

objections that have been made to the system are those which 
have arisen from attempts to adapt it to other duties. 

In accordance with the general principle of the law, which 
requires of the inventor, in the interest of the public, reason- 
able diligence, not only in perfecting, but in publishing his 
invention, it is provided that all applications for patents shall 
be completed and prepared for examination within two years 
after the filing of the application ; and in default thereof, or 
upon failure of the applicant to prosecute the same within two 
years after any action therein, of which notice shall have been 
given to the applicant, they shall be regarded as abandoned 
by the parties thereto, unless it be shown to the satisfaction of 
the Commissioner that such delay was unavoidable : Sec. 
4894, R. S. 

In connection with this section should be considered the pro- 
viso of sec. 35, Act of July 8th 1870, ^^ that when an application 
for a patent has been rejected or withdrawn, prior to the passage 
of this act, the applicant shall have six months from the date 
of such passage to renew his application or file a new one, and 
if he omits to do either, his application shall have been held 
to have been abandoned, and upon the hearing of such appli- 
cations, abandonment shall be considered as a question 
of fact." 

In Ex parte Andrew Mill, 7 0. G. 961, a case involving 
the interpretation of this proviso, the then Commissioner of 
Patents held; that although the word "abandoned'^ applied to 
the application alone, the subsequent word ^^abandonment'' 



94 APPLICATION FOR PATENT. 

has a wider signification, referring both to the application and 
the invention, though his decision appears to have turned 
more particularly upon an interpretation of the whole proviso, 
as in the nature of a statute of limitations affecting the right 
to a patent. So viewing it, he held that a new application filed 
more than six months after July 8th 1870, for an invention 
for which the same party had made, and after rejection had 
withdrawn, application for patent in 1855, could not be 
entertained. 

But in the late case of Ex parte George Crompton, 9 0. G. 
5, arising upon the same, section 35, this decision has 
been overruled, and it is now held that an applicant for a 
patent is not barred by the proviso in question from prosecu- 
ting a new application at any time, although a previous appli- 
cation by him for a patent for the same invention may have 
been rejected or withdrawn prior to July 8th 1870. 

This ruling appears, in fact, to be a necessary deduction 
from the holding of the Supreme Court, that a rejected and 
abandoned application is not evidence of prior invention, in the- 
sense of the laAv, and is not, therefore, a bar to a patent to 
another party. 

If a rejected and abandoned application is not evidence of a 
prior abandoned invention, as against another party, it cannot 
be so as against the applicant himself, unless the statute by 
express words make it so. But the word '' abandonment'' m 
the sections in question is used in connection only with the 
word ^'application," and the sections being in the nature 
of penal statutes are to be strictly construed. In accord- 



OFFICIAL EXAMINATION. 95 

ance with this reasoning (Sec. 4894, R. S.) is to be under- 
stood as meaning that failure to complete an application, 
or to prosecute it after rejection, within two years, will work 
an abandonment of that application, while under sec. 35, 
all applications rejected or withdrawn prior to July 8th 
1870, and not renewed within six months, are abandoned. 
In any of such cases a new application may be filed at any 
time, but it will not be treated as a continuation of the old 
application ; that, having been abandoned, is a nullity, and has 
no more relation to or bearing upon the new application of 
the same party, or the patent that may be granted thereon, 
than it would have upon the application or patent of an inde- 
pendent inventor. 

After an application for patent has been favorably con- 
sidered, and as it is termed, allowed, it is incumbent upon the 
applicant to pay into the Patent Office a further fee of twenty 
dollars ($20), before his patent will be actually granted and 
issued, and every patent must date as of a day not later than 
six months from the time at which it was passed and, allowed, 
and notice thereof sent to the applicant or his agent, and if 
the final fee is not paid within that period, the patent will be 
withheld : Sec. 4885, R. S. But a new application for patent 
for the invention or discovery, may be made by any person in- 
terested in it, whether as inventor, discoverer or assignee, 
provided that it be within two years after the allowance of 
the original application: Sec. 4897, R. S. 



96 INTERFERENCE PROCEEDINGS IN PATENT OFFICE. 



CHAPTER IX. 

Interfering Applications and Interfering Patents. 

Where general activity, in seeking for and devising im- 
provements, exists among the many persons engaged in dif- 
ferent branches of the practical arts, there is an ever-increas- 
ing probability of several parties independently making the 
same or similar improvements at or about the same time. As 
the first inventor only is entitled to a patent, it is important 
that the Commissioner of Patents should be able to determine 
priority of the question of invention as between two or more 
claimants of the same thing. 

Section 4904, of the Revised Statutes, therefore, provides that 
*^ whenever an application for a patent which, in the opinion 
of the Commissioner, would interfere with any pending ap- 
plication, or with any unexpired patent, he shall give notice 
to the applicants or applicant and patentee, as the case may 
be, and s-hall direct the primary examiner to proceed to de- 
termine the question of priority of invention, and the Com- 
missioner may issue a patent to the party who shall be 
adjudged the prior inventor." 

The special primary examiner, to whom the determination 
of this question is committed in the first place, is styled the 
Examiner of Interferences. From his decision the defeated 



INTERFERING APPLICATIONS, ETC. 97 

party may appeal to the Board of Examiners-in -Chief, from 
whose decision final appeal may be had to the Commissioner 
of Patents. 

The respective parties may have the aid of the process of the 
United States Courts, to compel their witnesses to attend and 
give their testimony, (Sec. 4906, K. S.) provided it be at a place 
not more than forty miles from the place where the subpoena 
is served, and that the legal fees and travelling expenses in 
going to, returning from, and one day's attendance at the 
place of the examination, are paid or tendered to the witness 
at the time of the service of the subpoena : Sec. 4908, R. S. 
A witness so subpoenaed cannot, however, be compelled to dis. 
close any secret invention or discovery made or used by 
himself. 

The rule of the office is that before declaring an interfer- 
ence proper, a preliminary interference will be declared, re- 
quiring each party to file a statement, under oath, giving a 
detailed history of his invention. 

The statement of each party remains sealed till opened at 
an appointed time by the Examiner of Interferences. If that 
officer then determines that the respective statements call for 
an interference, he declares it. 

If the party upon whom rests the burden of proof, i. e., the 
latest applicant, fails to file a statement, or if his statement 
fails to overcome the prima facie case made by the respective 
applications, i.e., if the date of invention given by the later 
applicant should not be anterior to the date of application by 
the earlier, or if it shows that he has abandoned his invention, 

7 



98 INTERFERENCE PROCEEDINGS IN PATENT OFFICE. 

or that it has been in public use more than two years before 
his application, the other party will be entitled to an imme- 
diate adjudication of the case upon the record. If the earlier 
applicant fail to file a preliminary statement, he will not be 
allowed to present any testimony going to prove that he made 
the invention at a date prior to his application. 

A preliminary statement cannot be used as evidence on 
behalf of the party making it, its use being to determine 
whether an interference should be proceeded with and to serve 
as a basis of cross-examination for the other party. 

If the Examiner of Interferences finds that the " preliminary 
statements '^ warrant the declaration of an interference, proper 
notice is given to the parties or their attorneys. 

In the absence of testimony, the party who first filed 
his application will be considered the first inventor. A 
time will be assigned in which the other party can take 
testimony, and a further time in which the adverse party 
shall complete his testimony 5 and if there be more than two 
parties, the times for taking testimony will be so arrano-ed 
that each shall have an opportunity in his turn, each being 
held to go forward and prove his case against those who filed 
their applications before him. 

The decision as to "priority of invention" is based upon 
a consideration and comparison of the testimony, which 
must be taken and considered in accordance with the ordinary 
rules as to admissibility or force of evidence. Or the decision 
may be based upon a concession by one party of priority to 
the other, which concession must be in writing, signed by the 
inventor and by the assignee, if there be one. 



INTERFERING APPLICATIONS, ETC. 99 

The power of the Commissioner, it will be noticed (Sec. 
4904, E. S.), extends in these cases, only to the ^^ issuing a 
patent to the party who shall be adjudged the prior inventor.'^ 

He cannot abrogate the patent that may have previously 
been granted to the other party. 

The issuing in such case of another patent to the adjudged 
prior inventor, is to put him on an equal footing with the 
patentee before the public and in the courts. 

Sec. 4918, R. S., provides a remedy in the courts for the case 
of two interfering patents, which may arise either from an 
interference or from oversight in the Patent OfiBce. 

** Whenever there shall be interfering patents, any person 
interested in any one of such interfering patents, or in the 
working of the invention claimed under either of such patents, 
may have relief against the interfering patentee, and all 
parties interested under him, by suit in equity against the 
owners of the interfering patent ; and the court, on notice to 
adverse parties and other due proceedings had, according to 
the course of equity, may adjudge and declare either of the 
patents void in whole, or in part, or in operative, or invalid, in 
any particular part of the United States, according to the 
interest of the parties in the patent or the invention patented. 
But no such judgment or adjudication shall affect the rights 
of any person, except the parties to the suit and those de- 
riving title under them, subsequent to the rendition of such 
judgment/' 

Under this section, either of several holders of interfering 
patents may take the initiative, by filing bill in equity against 



100 INTERFERING PATENTS. 

the other. The suit may be brought by any person interested 
in any one of such interfering patents, by a patentee, assignee 
or grantee, against any person interested in the other inter- 
fering patent or patents, and it has been held [A. T. Fos- 
ter V. W, M. Lindsay, 8 0. G. 1032), that in an action under 
this section, the court is authorized to review both of the con- 
flicting patents on their merits, and to decree the cancellation, 
not only of either, but of both, and that it may do so on the 
ground of want of novelty in either or both, or on any other 
ground, that in an action of infringement would affect the 
validity of either, and that, therefore, allegations in answer, 
setting up any of these defences to an action under this sec- 
tion are admissible. This ruling proceeded on the assumption 
that Sec. 4918 is broader in its application than the corre" 
sponding Sec. 16 of the Act of 1836, as to which the Supreme 
Court, in Mowry v. Whitney, 14 Wallace 434, had ruled that it 
only authorized the court to annul or set aside one patent, so 
far as necessary to protect the rights of the other party. 



REMEDIES FOR DEFECTIVE PATENT. IQl 



CHAPTER X. 

Remedies for Defective Patent. 

The grant of a patent after examination as to novelty and 
utility and the sufficiency of the specification is not conclusive 
upon those questions, and the government does not guarantee 
the validity of a patent. For obvious reasons, an application 
for a patent is an ex parte proceeding, of vrhich the public at 
large know nothing until the grant of the patent ; the only 
parties cognisant of the claim being, as a rule, the applicant 
and his attorney, if he have one, and the Patent Office. The 
public cannot be bound by those proceedings in the Patent 
Office relative to applications for patents, of which the law 
does not permit them to know or to become parties therein. 
Any person, therefore, sued for infringement of a patent may, 
as a rule, show by proper proof, if he can, that the invention 
claimed therein, or a material part of it, was not new or original 
with the patentee •, that it is not useful, or that for other 
reasons the patent should not have been granted, or is invalid. 

Litigation, consequently, not unfrequently has the effect of 
showing the patentee that his patent is defective in some 
material particular. 

If there be a total lack of novelty or utility in the invention 
claimed, the patent is, of course, totally invalid. But it may 



102 DISCLAIMED. 



be that the defect consists in the hick of one of these requisites 
in some part only of the thing claimed, or merely in the mode 
in which the invention is described or claimed. In its liberal 
dealings with the rights of patentees, whose patents are thus 
only partially or technically defective, our law is distinguished 
from that of any other country. 

'' Whenever through inadvertence, accident or mistake, and 
without any fraudulent or deceptive intention, a patentee has 
claimed more than that of which he was the original or first 
inventor or discoverer, Jiis patent shall he valid for all that 
part ivhich is truly and justly his own, provided^ the same is a 
material or substantial part of the thing patented ; and any 
such patentee, his heirs or assigns, whether of the whole or 
any sectional interest therein, may, on payment of the fee re- 
quired by law, make disclaimer of such parts of the thing 
patented, as he shall not choose to claim or to hold by virtue of 
the patent or assignment, stating therein the extent of his 
interest in such patent. Such disclaimer shall be in writing, 
attested by one or more witnesses, and recorded in the Patent 
Office, and it shall, thereafter, be considered as part of the 
original specification, to the extent of the interest possessed by 
the claimant and by those claiming under him after the record 
thereof. But no such disclaimer shall affect any action pending 
at the time of its heing filed^ except so far as may relate to the 
question of unreasonable neglect or delay in fling it : Sec. 4917, 
K. S. 

It will be perceived from the italicised portions of the sec- 
tion, that the filing of the written disclaimer is not a necessary 
precedent to the validity of the patent for " all that part," 



aEMEDIES FOR DEFECTIVE PATENT. 103 

which being " a material or substantial part of the thing 
patented/^ is truly and justly the patentee's own. 

And sec. 4922, R. S., distinctly provides that the patentee, 
his executors, administrators or assigns, whether of the whole 
or any sectional interest in the patent, may maintain a suit at 
law or in equity for the infringement of any part thereof 
which was bona fide his own, if it is a material^ and substan- 
tial part of the thing patented, and definitely distinguishable 
from the parts claimed without right ^ notwithstanding the 
specifications may embrace more than that of which the 
patentee was the first inventor or discoverer. But in every 
such case in which a judgment or decree shall be rendered for 
the plaintifi", no costs shall be recovered, unless the proper 
disclaimer has been entered at the Patent Office before the 
commencement of the suit. But no patentee shall be entitled 
to the benefits of this section if he has unreasonably neglected 
or delayed to enter a disclaimer. 

The only ejffect then of failure to file a disclaimer before 
bringing suit, is that plaintiff shall not recover costs. 

It in no way affects his right to recover damages for in- 
fringement of that part of his patent which was bon^ fide his 
own, or to obtain an injunction, unless he has ^' unreasonably 
neglected or delayed to enter a disclaimers^ 

Such unreasonable neglect or delay, however, will disentitle 
him to the benefits of the section, so that he can'not maintain 
an action at law or in equity under the patent for any pur- 
pose : Brookes v. Bicknellj 3 M'Lean 449 ; Parker v. Stiles, 
5 M'Lean 56. 



104 DISCLAIMER. 



What will constitute the *' unreasonable neglect or delay" 
which will have this effect, is a question of fact to be decided 
upon consideration of the particular circumstances of each 
case, and the burden of proving such unreasonable neglect or 
delay is upon the defendant, and if he desire to avail himself 
of this defence to an action, he must set set it up and prove 
it : Burden v. Corning^ 2 Fisher 277. 

If then, either before or after bringing action for infringe- 
ment, the complainant shall ''without unreasonable neglect or 
delay" file in the Patent OflBce a disclaimer of that portion of 
the invention which may appear to have been claimed without 
right, he may maintain the action for infringement of so much 
of the patent as is valid : Carhart v. Austin^ 2 Fisher 543. 
And in Aiken v. Dolan, 3 Fisher 197, the complainant pro- 
posing at the hearing to disclaim certain matter which the 
proofs in the case had shown to be old, the court held that 
there mip;ht be a decree for perpetual injunction without any 
actual previous disclaimer of record in the Patent Office. 

The question may sometimes arise as to what will constitute 
** unreasonable neglect or delay," to file a disclaimer after 
suit brought. In Silsby v. Foote, the Supreme Court held 
that, where evidence going to show that the invention was not 
new, was introduced on the trial of a feigned issue in 1851, and 
the question of novelty had been in controversy from that 
time to 1857, and no disclaimer had been entered, there had 
not been an unreasonable delay. And in O'Reilly v. Morse, 
15 How. 12, the same court held, that where a claim has 
been sanctioned by the Patent Ofi&ce, and had been held valid 



REMEDIES FOR DEFECTIVE PATENT. 105 

by a Circuit Court, the patentee had a right to insist upon it, 
and not disclaijn it until it had been passed upon by the high- 
est court. 

The disclaimer is to be " in writing, attested by one or more 
witnesses, and recorded in the Patent Office." It must dis- 
tinctly disclaim *' such part of the thing patented, as the party 
filing it shall not choose to claim or hold by virtue of the 
patent or assignment, and shall state the extent of the interest 
of the party disclaiming in the patent.'' 

The party disclaiming may be the patentee, or an assignee 
of the whole patent, or of a part interest therein, or the grantee 
of an exclusive right under the patent in a specified portion of 
the United States, and a disclaimer filed and recorded is there- 
after a part of the patent to the extent of the interest therein of 
the party or parties making the disclaimer. 

No parties interested in a patent, therefore, are bound by, 
or can claim in any action, the benefit of a disclaimer to which 
they, or those from whom they derive title, have not been 
parties. 

It will further be noticed, that the terms of the statute 
make the remedy of disclaimer applicable only to cases, where 
after excision of the matter claimed without right, a material 
or substantial part of the thing patented will remain, i. e., a 
part forming in itself a substantive, patentable invention, and 
clearly *' separable and distinguishable" in the description 
and claim from the matter cut out. 

When, therefore, the patent is not thus divisible, when the 
original claim is not of such character, as to allow of a correc- 



106 



tion of the patentee's error by cutting out some clearly separ- 
able part, the removal of which will yet leave in the patent a 
material and substantial, patentable subject of claim, the 
remedy of disclaimer cannot be resorted to. 

Now, there are very many patents inadvertently made too 
broad, in which the character of the invention or of the de- 
scription or claim would prevent any such rectification of th-e 
patent by mere excision. 

The remedy in such a case, or for a specification defective 
and insufficient in any other respects, is a re-issue. 

" Whenever any patent is inoperative or invalid, by reason of 
a defective or insufficient specification^ or by reason of the 
patentee claiming as his own invention or discovery^ more than 
he had a right to claim as new, if the error has arisen by inad- 
vertence, accident or mistake, and without any fraudulent or 
deceptive intention, the Commissioner shall, on the surrender 
of such patent, and the payment of the duty required by law, 
cause a new patent for the same invention, and in accordance 
with the corrected specifications, to be issued to the patentee, 
or in the case of his death, or assignment of the whole or any 
undivided part of the original patent, to his executors, adminis- 
trators or assigns, for the unexpired part of the term of the 
original patent, the surrender of which shall take effect upon 
the issue of the amended patent: Sec. 4916, R S. 

For patents, the claims of which are too broad, the remedy 
of re-issue is applicable, when the defect is such as to render 
the 'original patent altogether inoperative or invalid, because 



REMEDIES FOR DEFECTIVE PATENT. 107 

the character of the invention, or of the description and claim, 
is such that there is no material or substantial part of the 
thing patented, which being truly and justly the patentee's 
own, is clearly separable and distinguishable in the patent, as 
it stands, from that which is not the patentee's own. In other 
words, the remedy of re-issue is applicable when that of dis- 
claimer is not. 

A patent which, being too broad, may yet be remedied by 
disclaimer, is not altogether inoperative and invalid, but, as 
we have seen, is by the terms of the law valid, for all that 
which being a material and substantial part of the thing 
patented, is truly and justly the patentee's own. 

But a patent which, being too broad, must be remedied by 
surrender and re-issue, is inoperative and invalid, and no suit 
can be maintained upon it, because the old and new matter 
cannot be separated in the description and claim as they 
stand, and no distinct part can be taken away and still leave a 
material and substantial part of the thing patented, definitely 
distinguishable from the parts claimed without right Di- 
vision, therefore, being impossible, and since the patent as it 
stands, not being so divisible is wholly invalid, the only 
remedy is reconstruction of the description and claim, and this 
can be effected by way of surrender and re-issue. 

But the remedy of re-issue is available, likewise, where the 
claims of the original invention do not cover the whole inven- 
tion. .These are cases in which the patent is invalid and in- 
operative, owing to a defective and insufficient specification, 



108 RE-ISSUE. 



the particular defect or insufficiency being its failure to ** point 
out and distinctly claim, as the law requires, all that the 
patentee claims as his own invention.'^ This species of defect 
is the most frequent cause for re-issue, though a specification 
may be so defective or insufficient in its descriptive parts as to 
require for that reason alone, correction by re-issue. 

It is carefully to be borne in mind, that the legitimate 
object of a re-issue is simply to correct that wherein the original 
patent was defective, more fully or correctly to describe 
or claim the invention therein sufficiently indicated or 
claimed. The words of the law are, that the Commis- 
sioner shall, on the surrender of a patent, and payment of 
the required duty, cause a new patent for the same invention^ 
and in accordance with the corrected specifications^ to be 
issued ; and it is distinctly provided that no new matter 
shall be introduced into the specification. This term, new 
matter, obviously has reference, not to mere language, but to 
substance. Such changes or amplifications of language may, 
of course, be made as are necessary to efi*ect the legitimate 
object, "the correction of that wherein the original patent 
was defective,^' whether in description or in claim. But no 
new or changed feature of invention can be introduced, be- 
cause the re-issue patent is to be for the identical invention 
which the patentee had made when he applied for his original 
patent, and for which that patent would then have been 
granted, had the description or claim not been defective. 

The privilege of re-issue, which is intended as a remedial 
measure in favor of the rights of inventors, has not unfrequently 



REMEDIES FOR DEFECTIVE PATENT. 109 

been perverted into a means for unlaw^fully stretching the 
apparent scope of patents beyond the true invention, and thus 
imposing upon and injuring the public. 

This has been effected, sometimes, by basing upon such ru- 
dimentary traces of important principles as might be found in 
a patented invention, broad and svreeping claims couched in 
language designed, in effect, to cover any known application 
of such principles to a like purpose, and, sometimes, by a de- 
liberate interpolation in the amended specification of new 
matter not to be found in the original patent at all. 

The evil practice grew, until it had assumed alarming pro- 
portions. No sooner did a patent for some really useful in- 
vention become remunerative, and so draw attention, than it 
became the object of the greedy and unscrupulous to find some 
old patent, worthless in itself, but in which might be found 
some rude embryonic traces of the principles involved in the 
valuable patent. Then a re-issue was obtained, and all 
that can be accomplished by ingenious verbiage was done 
to give this re-issue the apparent effect of anticipating and 
covering whatever was valuable in the later patent. This 
species of re-issue became a weapon wherewith to embarrass 
and levy blackmail upon meritorious patentees and manufac- 
turers, and either to cut off or compel a division of the hard- 
earned fruit's of their ingenuity, or of their enterprise and in- 
vested capital. 

The courts have had frequent occasion to animadvert upon 
re-issues of this kind, and it was partly, no doubt, with a view 
to check the mischievous practice, which has generally pro- 



110 RE-ISSUE. 



ceeded from speculators and not from true Inventors, that in 
the Act of 1870 a provision was introduced (sec. 4895, R. S.), 
that an application for a re-issue must be made, and the speci- 
fication sworn to by the inventor, if he be living, even though 
the patent have been assigned by him to others, unless so 
assigned prior to July 8th 1870. 

This provision seems well calculated both to restrain the 
obtaining of unlawful re-issues, and to lead to greater care in 
the preparation of applications for original patents, as it tends 
to make worthless or defective patents less available for 
speculative purposes. 

A further restraint is in the proviso of sec. 4916, R. S., 
^' that in case of a machine patent, the model or drawings shall 
not be amended, except each by the other.^' 

A relaxation of this rule, and one of questionable policy, 
though applicable only to a limited class of cases, is contained 
in the succeeding clause : '' but when there is neither model 
nor drawing, amendments may be made upon proof satisfac- 
tory to the Commissioner, that such new matter or amendment 
was a part of the original invention, and was omitted from 
the specification by inadvertence, accident or mistake, as 
aforesaid." 

Again, it sometimes happens that one patent has been made 
to embrace several distinct patentable improvements, each of 
which might have been made the subject of a distinct patent, 
aud it may become proper and desirable thus to separate them. 
For this, the law provides " that the Commissioner may, in bis 
disci'etion, cause several patents to be issued for distinct and 



RE-ISSUE. Ill 



separate parts of the thing patented, upon demand of the 
applicant and the payment of the required fee for a re-issue, 
for each of such re-issued letters patent." 

'^ The specification and claim in every such case shall be 
subject to revision and restriction, in the same manner as 
original applications are*/' Sec. 4916, R. S. That is to say, 
applications for re-issues are to undergo an examination, for 
the purpose of determining whether or not the matter claimed 
was new at the time the original patent was applied for, and 
is useful within the meaning of the law, and whether the new 
specification meets the requirements of the law. 

A re-issue is to be for the very invention, or some substantial 
and material part of it, shown or described in the specification, 
drawing or model of the application for the original patent ; 
if the Commissioner of Patents decide that the matter em- 
braced in the new specification was so shown or described in 
the original, was new at the time, is useful, and sufficiently 
described and claimed in the new specification, it is his duty 
to grant the re-issue, without any reference to patents which 
may have been granted to others, subsequent to the original 
patent sought to be re-issued. It was formerly considered 
to be within the discretion of the Commissioner of Patents 
to declare an interference between applications for re-issue 
and any such intervening patents, but it has been held by 
the Supreme Court of the District of Columbia, that he has 
no such power. 

If a re-issue be refused, the original patent remains in force, 
the surrender of the original taking efiect only from the grant 
of the re-issue. 



112 REMEDIES FOR DEFECTIVE PATENTS. 

" The patent so re-issued, together with the corrected specifi- 
cation, shall have the effect and operation in law on the trial of 
all causes for actions thereafter arising, as though the same 
had been originally filed." Of any claim under the original 
patent, the surrender and re-issue, since they involve a distinct 
avowal by the patentee that such original patent was inopera- 
tive and invalid, are, of course, an abandonment. 

The act of the Commissioner of Patents in granting a re- 
issue, is considered by the courts as raising a presumption 
that it is for the same invention as was the original patent, a 
presumption conclusive, unless it is apparent upon a compari- 
son of the re-issued with the original patent to be made by the 
court, that there is such a clear repugnancy between the old 
and the new patent, that, as matter of legal construction, the 
re-issued patent must be construed as not for the same inven- 
tion described or shown in the original. 

The question is one of law for the court, and no evidence 
outside of the patents themselves is received, unless the court, 
in its discretion, allow that of experts for the purpose of ex- 
plaining technical terms requiring the assistance of such per- 
sons in defining them : Seymour v. Osborne^ 11 Wallace 516. 

A person sued as an infringer of a re-issued patent, cannot 
make the defence or offer testimony to show that the re-issue 
was obtained by fraudulent representations. 

If he desires to contend that the patent should be abrogated 
on that ground, he can do so only through the medium of a 
direct action for that purpose. 



ASSIGNMENT BEFORE PATENT. 113 



CHAPTER XI, 

Of Assignments — Grants— Licenses. 

The statute (sec. 4884, R. S.) enacts, that every patent shall 
contain '^ a grant to the patentee, his heirs or assigns, for the 
term of seventeen years, of the exclusive right to make, use 
and vend the invention or discovery throughout the United 
States and the territories thereof/' 

The patentee may be the inventor, or his assignee, for the 
right to a patent for an invention may be assigned before a 
patent is obtained or even applied for : Rathhorne v. Orr^ 5 
M'Lean 132. The Constitution and the law together give to 
the inventor, from the moment of discovery, an inchoate pro- 
perty therein, which is completed by suing out a patent : Evans 
V. Jordan, Brock. 252 ; Gayler v. Wilder^ 10 Howard 477 ; and 
this inchoate property he may assign to another, who will then 
be entitled to receive the patent ; Sec. 4895, R. S. 

It was at one time held (4 Opin. Attorney-General and 
Ager's Case, Law's Digest 159), that a patent could not pro- 
perly issue jointly to an inventor, as such, and his assignee of a 
part interest, but that it must issue to the inventor or to the 
assignee or assignees of the whole interest. 

And in cases where an inventor sold a part interest, and it 

8 



114 PATENTS — THE TITLE. 



•was desired that the patent should issue to himself and the 
purchaser, it was the practice for the inventor to assign to 
himself and the purchaser, and to request the issue of the 
patent to the parties jointly as assignees. But the present 
rules of the Patent Office do not require this, and a patent will 
be issued to the inventor and an assignee of an undivided part 
of the interest jointly. 

In every case application for an original patent must be 
made, and the specification sworn to by the inventor or dis- 
coverer, if he be living (Sec. 4895, R. S.), or if he be dead, by 
his executor or administrator (Sec. 4896, K. S.), and to secure 
the issue of a patent to an assignee, the assignment must first 
be entered of record in the Patent Office (Sec. 4895, R. S.), and 
should contain a clause authorizing and requesting the Com- 
missioner so to issue the patent. 

If the assignment do embody such a clause, it will suffice to 
pass the legal title to the patent to the assignee, even though 
the patent should, by accident, issue to the inventor. No 
additional assignment, after the grant of the patent, will be 
necessary: Gaijler v. Wilder^ 10 Howard 477. But it has 
been considered, that if the assignment do not contain such a 
clause, it operates as a mere contract to convey and passes 
only an equitable title to the assignee, a transfer after the 
grant of the patent to the inventor being requisite to vest in 
the assignee a legal title, entitling him to sue for infringement 
in his own name : Curtis on Patents 172. 

There is no doubt as to the efficacy of an assignment made 



ASSIGNMENT BEFORE PATENT. 115 

before the grant of, or before application for a patent to pass 
the legal title to the patent when granted, if the invention was 
actually made and existing at the time of the assignment, but 
as to instruments which purport to assign inventions or im- 
provements not yet made, the case is different. 

It is not an infrequent occurrence, that an assignment of a 
patented invention assumes also to assign improvements which 
the assignor may have made or may thereafter make upon 
that invention, and requests and authorizes the issue of 
letters patent for such improvements to the assignee. Such 
an instrument, while it may be operative as an assignment of 
the legal title to improvements made, is not so as to future im- 
provements, no matter how absolute the terms of assignment 
with respect to them may be. A man cannot assign what he 
has not, and he has not the right to a patent for that which he 
has not yet invented. As regards future possible improve- 
ments, therefore, an ostensible assignment of them can at most 
operate as a covenant to convey them when made. No legal 
title to such improvements when made vests under the instru- 
ment, though as a contract to convey it may be good and may 
be enforced by a bill for specific performance. Until, how- 
ever, the equitable title which it may confer has been made 
into a legal title by a valid assignment, the assignee cannot 
receive the patent for the improvements or maintain action 
in his own name for an infringement of a patent granted 
therefor. 

Every patent, or any interest therein, shall be assignable in 



116 PATENTS THE TITLE, 



law by an instrument in writing, and the patentee, his assigns 
or legal representatives, may, in like manner, grant and convey 
hu exclusive right under his patent to the whole or any speci- 
fied part of the United States : Sec. 4898, R. S. 

Two modes of passing patent property are here specified ; 

1. An assignment of the patent or an interest therein. 

2. Grant or conveyance of an exclusive right under the 
patent to the whole or any specified part of the United States. 

The distinction between an assignment of an interest in a 
patent, and a grant or conveyance of an exclusive right there- 
under to some specified part of the United States, is that by 
the former the patentee parts with a portion of his interest 
throughout the whole country, while by the latter he parts 
with his whole interest throughout a portion of the country. 

An assignment of an interest makes the assignee a tenant 
in common with the assignor, of the rights conferred by the 
patent. These rights may thus be enjoyed by any number of 
tenants in common, who may each make, use and vend the 
thing patented, or grant licenses [Clum v. Brewer^ 2 Curt. 
507), independently of the others, and without accounting to 
them for any portion of the profits. In other words, an 
assignment of a part interest in a patent does not of itself 
create the relation of co-partners between the assignor and 
assignee or establish mutual accountability. To create such 
a relation, an express understanding must appear that the 
patent is to be worked by the parties jointly, and that there is 
tc be a division of the profits, or if the assignee is to account 
to his assignor for any portion of the profits, the undertaking 
must clearly appear. 



ASSIGNMENT AFTER PATENT. 117 

The relative position of joint owners of a patent, either as 
joint patentees or by assignment, is not affected bj the 
apparent equality or inequality of interest held by the several 
parties. 

Whether an assignment purport to convey one-half or only 
the one-hundredth part of the interest of the assignor, the 
right to the enjoyment of the patent privilege is held in 
common, and the respective proportions of interest held by 
several assignees are of practical moment only where the 
privilege is exercised by them jointly, or when it is proposed 
to merge the several interests into one title, or to make terri- 
torial partition of the patent right among the parties. 

An assignee of a part interest in a patent cannot alone sue 
for infringement of the patent right, but his co-owners must 
join in the action, for such an action must be brought by the 
owner or owners of the exclusive right in the patent in the 
territory where suit is brought ; whereas, such an assignee 
owns a part only of the interest in the whole United States. 

For the like reason, it is apparent that such an assignee can- 
not confer an exclusive right or license under the patent. 

The second mode pointed out by s. 4898, of disposing of 
patent property, is by the grant of an exclusive right there- 
under to the whole or any specified part of the United States. 

A grant, such as here meant, vests in the grantee the exclu- 
sive right to make, use and vend, and to grant to others the 
right to make, use and vend the thing patented, either within 



118 PATENTS THE TITLE. 

the whole United States, in which case it may be tantamount to 
an assignment of the patent, or within some specified part of 
the United States. By such an instrument, the grantor di- 
vests himself to the extent of the territory named in the 
grant, of all interest in the patent, although he may not have 
chosen to vest that interest in all its original integrity in the 
grantee. For example, though the right of the grantee should 
be limited to the making or using a limited number of ma- 
chines, yet if the grantor does not reserve to himself the 
right to make or use within the territory named in the grant, 
but vests exclusively in the grantee the right of using and 
making, and of granting to others the right to make or use, it 
is an exclusive grant such as the statute contemplates : Wash- 
burn V. Gould, 3 Story 122. 

A grantee may maintain an action for infringement of the 
patent, Avithin the territory covered by his grant, or give exclu- 
sive licenses. 

An *' assignment, grant or conveyance" must be by an in- 
strument of writing (sec. 4898, R. S.), but no particular char 
acter or form of instrument, nor any particular form of execu- 
tion is requisite. 

It is not necessary that the document should be under seal, 
or that it should be witnessed, or acknowledged, nor that any 
particular form of words should be employed in the body of 
the instrument. It is sufficient if, from the language of the 
document as a whole, its subject and true intent can be 
gathered. 



RECORD OF ASSIGNMENTS OR GRANTS. 119 

Sec. 4898, II. S., further provides that assignments and 
grants or conveyances of exclusive rights shall be void, as 
against any subsequent purchaser or mortgagee for a valuable 
consideration vrithout notice, unless it be recorded in the 
Patent Office v^ithin three months from the date thereof. 

By the word ''subsequent" here, is meant a purchaser or 
mortgagee subsequent to the expiration of the three months 
within which record of the first assignment or grant should 
have been made, and prior to the time at which it may be 
made. An unrecorded assignment is valid, as against any one 
but such a purchaser or mortgagee in good faith, without 
notice. 

The recording is not a pre-requisite indispensable to the 
operation or validity of an assignment : Pitts v. Whitman^ 2 
Story 609. Its object is to protect bon^ fide purchasers ; 
to guard against an outstanding title of over three months' 
duration, the purchaser need only look to the records of the 
Patent Office ; within that period he must protect him.self as 
best he can, as an unrecorded assignment would prevail : Gib- 
son V. Cookcj 2 Blatch. 148. 

Record of an assignment, grant or conveyance at any time, 
will protect the assignee or grantee against any purchaser sub- 
sequent to the record, for that is notice to the world. 

The possible penalty, then, of delaying record beyond the 
three months, is that during the time intervening between the 
expiration of that period and the actual recording of his title, 
another purchaser or mortgagee may have acquired a right 
which will be preferred. But such an intermediate purchaser 



120 PATENTS — THE TITLE. 



or mortagee, to be preferred, must be bonA, fide, without no- 
tice, actual or constructive, of the prior assignment or grant. 

To enable an assignee or grantee to maintain suit for in- 
fringement, his deed must be recorded, but the record need not 
be before suit brought ; it is sufficient if recorded before the 
trial : Blanchard's Gim Stock Co. v. Warner^ 1 Blatch. 258. 

A licensee is defined as " one who has had transferred to him 
in writing or orally, a less or difierent interest than either the 
interest in the whole patent or an undivided part of such 
whole interest, or an exclusive sectional interest." 

As a license does not change the title to the patent, or any 
part of it, it need not be recorded, and the licensee, not having 
an interest in the patent, cannot sue in his own name for an 
infringement* 

A license may be either to make or use or sell the thing 
patented, or to do all three, and may be exclusive, or merely 
general, revocable or irrevocable, and for the whole or a part 
of the term of the patent, and for the whole or any part of the 
United States. 

The distinction between an exclusive license and a grant of 
an exclusive right under the patent, is that a licensee cannot 
grant portions of the right to others. His right, though exclu- 
sive, is personal 5 and it is characteristic of licenses generally, 
that they are not assignable, unless made so by the express 
terms of the instrument ( 2^ro?/ Iron and Nail Factory v. Corn- 
ing, 14 Howard 193), and then only as an entirety, a licensee 
having no power to apportion among several others the right 
granted to himself: Brooks v. Byam^ 2 Story 525. 



121 



And as a license granted to a certain person without express 
power to assign, can be exercised only by the grantee ; so, a 
license confined to a specific factory, or place of business, 
which is technically termed a shop-right, can be exercised only 
in that place. A license to use one patented machine, implies 
the right to build it for use, to keep it in repair, and to replace 
it by another, when worn out, unless the license be distinctly 
confined to a certain specified machine : Woodworth v. Curtis, 
2 Wood. & M. 524 ; Biclcnell v. Todd, 5 McLean 236. 

But unless the license to use be expressly made assignable, 
the licensee cannot transfer the right of use to one who should 
purchase the machine from him : Wilson v* Btolley, 4 McLean 
255. 

And it has been held that a license to use an invention by 
the licensee only at his own establishment, does not authorize 
use at an establishment owned by himself and others : Rubber 
Co. V. Goodyear, 9 Wallace 788. 

A license to a railroad company to use a patent car-brake 
on all cars belonging to the company, covers its use upon their 
cars, though running upon the road of another company, but 
not upon the cars of another company l-unning upon their 
road: Hodge v. Hudson River Railroad Co., 6 Bl. C. C. 85. 

If a licensee fail to perform any of the conditions upon 
which the license is granted, as, for example, the payment of 
royalties or license-fees, his licensor may treat him as an in- 
fringer, and bring action in equity to enjoin him from further 
exercising the patented invention in violation of the conditions. 
In such a case, can the licensee defend on the ground of in- 



122 PATENTS — THE TITLE. 

validity of the patent? The purchase of a license forms no 
bond of allegiance to the patentee, and does not of itself estop 
the licensee from averring or proving any defence in an action 
for the infringement of the patent, vrhich any other person 
might use : Burr v. Durijee, 2 Fisher 275. But if the license 
contain covenants or recitals, amounting to an admission by 
the licensee of the validity of the patent, it would seem that 
he cannot afterwards make defence to an action by the patentee, 
contradictory of such covenants or recitals. 

Where the license contains a clause, providing that it shall be 
void on non-fulfilment of the conditions, as, e. g., periodical 
payments of royalty, it has been held that the licensor may 
either sue to enforce performance of the condition, or regard- 
ing the licenses as forfeited, may sue to enjoin the licensee as 
an infringer: Woodivorth v. Cook, 1 Blatch. 165. 

In a suit of the former kind, the licensee may set up inva- 
lidity of the patent, as failure of consideration, if he has not 
enjoyed the benefits of the license, and has not, in the license, 
distinctly admitted the validity of the patent, although it 
would seem that a licensee, who has actually enjoyed the ben- 
efits of the license and has paid royalties therefor, cannot, if the 
invalidity of the patent be afterwards discovered, recover on 
that account the royalties paid: Curtis on Patents 216, 217. 

Where the licensor elects to sue for infringement, it has 
been held that the licensee is remitted to his original rights 
and position, as the contract must be avoided altogether, if at 
all : Wbodworth v. Cook, 2 Blatch. 151. 

But a doubt has been expressed whether under the authority 



LICENSES. 123 



of this decision, the principle is to be extended to relieving the 
patentee from the estoppel of distinct admissions, in the license, 
of the validity of the patent : Curtis 218. 

In the connection between the conditions of a license, and its 
operation to confer right upon the licensee, it differs from an 
assignment or grant of an exclusive right. A license does not 
pass a title, but is simply a personal power or dispensation, 
subject to the conditions upon which granted. But an assign- 
ment or grant passes a legal title, and to this end operates 
independently of conditions or covenants with which it may 
be coupled, so that the title will remain vested in the assignee 
or grantee, until conveyed by him to another. An assignment 
or grant, therefore, cannot be conditional in the same sense as 
a license may be. 

The terms of an assignment or grant upon conditions or cov- 
enants to be performed by the purchaser, may be such as to 
enable the assignor or grantor to compel, by suit, a reconvey- 
ance upon failure of performance 5 but until there is an actual 
reconveyance in writing, the legal title assigned or granted re- 
mains in the purchaser. 

The concurrent exercise of a patent-privilege by a number 
of assignees, grantees or licensees, and in the case especially 
of patents for machines, devices, or compositions of matter, 
the independent sales by such assignees, grantees or licensees 
of the things patented to members of the public at large, give 
rise to apparently intricate questions of respective rights. 

An unconditional sale of a patented machine or other article, 
by a party having a right under the patent to make such an 



124 PATENTS — TITLE TO. 



unconditional sale, confers on the purchaser the same right of 
using or of selling to others that machine, as he would have in 
regard to any article of merchandise. Such an unconditional 
purchase and sale is said to take the thing sold out of the limit 
of the monopoly ; and the purchaser may use it until it has 
been worn out, or may repair or improve on it, or dispose of it, 
as he pleases, in the same manner as if dealing with property 
of another kind : Bloomer v. McQuewan^ 14 Howard 539 ; Chaffee 
V. Boston Belting Co,, 22 Id. 217. 

And where a patentee had assigned his right to manufac- 
ture, sell and use a patented article within a limited district, it 
was held by the Supreme Court, that a purchaser of such 
article, when rightfully bought within the prescribed limits, 
acquired by such purchase, the right to use it anywhere, with- 
out reference to other assignments of territorial rights by the 
patentee : Adams v. Burke, 17 Wallace 453. 

The law of 1836, authorizing the Commissioner of Patents 
to extend Letters Patent for a term of seven years, from the 
expiration of the original term, contained a proviso that '^ the 
benefit of the extension of a patent shall extend to the as- 
signees and grantees of the right to use the thing patented, to 
the extent of their interest therein.'^ 

This proviso was construed to mean ( Wilson v. Rousseau, 4 
Howard 646), not that the extension inured to the benefit of such 
assignees or grantees under the original patent, so as to vest 
in them any exchisive right under the extension, but simply 
that those in use of the patented article at the time of the ex- 



RIGHTS OF PURCHASERS OF PATENTED ARTICLES. 125 

tension should have free right to continue the use, during the 
extended term, of the specific article or articles so in their 
possession ; the phrase "to the extent of their interest there- 
in," being construed to mean their interest in the patented 
articles, be that in one or more of them, at the time of the 
extersion. 

And in Bloomer v. McQuewan, it was held that one in the 
lawful use of a machine, under a purchase during the original 
term of the patent^ is entitled, within the intention and 
spirit of the patent laws, to continue such use during an exten- 
sion made by a special Act of Congress, unless there is some- 
thing in the language of the act requiring a different con- 
struction. 

This separating of the right of use from that to make, or to 
vend, which under the statute was thus applied to the protection 
of assignees or grantees under the original term of a patent, 
which might be afterwards extended, the courts have applied, 
to its fullest extent, for the protection of bon^ fide purchasers 
of a patented article from the patentee, or from any one author- 
ized by him to sell it ; holding, that in such case the right of 
use is unlimited, not only as regards time, but as regards place 
{Adams v. Burke), even though the vendor's own right of use 
may be expressly limited to some particular territory by the 
terms of the instrument under which he claims, 



126 INFRINGEMENT — SUITS FOR. 



CHAPTER XII. 

Infringements and Suits for Infringement. 

Letters Patent grant to the holder the exclusive right of 
making, using and vending the patented invention within and 
throughout the United States and territories. Consequently, 
a patent is infringed either by making, or by using, or by 
vending the thing patented, without the patentee's consent. 

The unauthorized making of a patented article, whether for 
one's own use, or for sale to others, is an actionable infringe- 
ment, and this though there may have been no actual use or 
sale : Whittemore v. CvUer, 1 Gall. 429 ; Bloomer v. Gilpin^ 
4 Fisher 50. It is also an infringement, either to use or to sell 
a patented article without the consent, express or implied, of 
the patentee. He who purchases a thing, the making or 
selling of which was an infringement of the patent, will him- 
self be an infringer, if he either uses or sells to another the 
thing so purchased. In brief, it is an infringement to make a 
patented article, though it is never used by the maker, or to 
use a patented article, though made by another, or to sell to 
others the articles manufactured by another : Haselden v. Ogden., 
3 Fisher 378. • 

Infringement being a tort, parties engaged together in 
the making, using or selling of infringing articles are jointly 



INFRINGEMENT — WHAT IS. 127 

and severally liable. And though a patent for a combination 
is not infringed by a party who uses only a part of the elements 
claimed in combination, if several parties concert to manufac- 
ture and sell, each one a different part of the patented com- 
bination, with a view that the whole may be put together for 
sale or use, they may be treated ^s infringers, and each one be 
liable for all the damages : Wallace & Sons v. Holmes j Booth 
& Haijden, 1 0. G. 117 5 Coolidge v. M' Cone, 5 0. G. 458. 

And though a patented corset spring, for example, must be 
attached to the corset, in order to constitute the combination 
which is claimed, yet the manufacture of the springs, ready to 
be so applied, will be enjoined ; Barnes v. Strauss j 2 0. G. 62. 

But if a patent be for the use of an article in a particular 
application, and disclaim the article itself, the mere making 
and selling of the article so disclaimed is not an infringement : 
Keystone Bridge Co, v. Phcenix Iron Co., 1 0. G. 471. 

A party who manufactures a patented article to the order of 
a third person may be held guilty of infringement: Bryce v. 
Borr^ 3 McLean 582. The question of infringement is one 
irrespective of motive. A party may be an infringer without 
intending or knowing it. But motive or knowledge may affect 
the question of damages : Parker v. Hulme, 1 Fisher 44. 

A contract to buy all the product of an infringing machine 
during a certain period will not. in itself, render the pur- 
chaser liable to an action for infringement .as a user of the 
machine ; but otherwise, if it appear that the contract is color- 
able' only and not real, and that actually the machine was 



128 INFRINGEMENT — SUITS FOR. 

wholly or partly owned by the party contracting to take the 
product, or was hired by him under color of such contract ; 
KepUnger v. De Young , 10 Wheat. 358. 

If a patent embrace several claims, action may be sustained 
for the infringement of any one of them : Moody v. Fiske, 2 
Mass. 112; Singer v. Walmesleg, 1 Fisher 558. The unauthor- 
ized use of a patented invention is an infringement, no matter 
what else the user may add to it {Johnson v. Boot, 1 Fisher 
351 ; Buerk v. Valentine, 2 0. G. 295), even though the object 
or result to be secured is thereby better accomplished : Imlay 
V. Norwich & Worcester Railroad Co.^ 1 Fisher 340. And a de- 
vice which performs all the functions of one that is patented, 
substantially in the same way and by substantially the same 
means, is none the less an equivalent to those described in the 
patent, because it performs some of those functions better, or 
performs others in addition: Wheeler v. Clifford Mower & 
Reaper Co., 2 0. G. 442. 

The patentee of an improvement upon a patented invention 
cannot take possession of the latter ; he must obtain the license 
of the prior patentee to use his improvement, or await the 
expiry of the elder patent: Colt v. Mass. Arms Co.^ 1 Fisher 
108. 

Licensees, under a patent, may become infringers, either by 
exceeding the authority given them, ex gr. : constructing two 
machines, when authorized to use only one [Bloomer v. Gil- 
pin^ 4 Fisher 50), or by failing to observe covenants upon 



INFRINGEMENT — WHAT IS. 129 

which the license may be conditioned, and the implied license 
arising where one has made an article, with inventor's con- 
sent, before the grant of the patent, extends only to the con- 
tinued use after the grant of the patent, and the keeping in 
condition for such use by repairs, if necessary, of the par- 
ticular article so made, and anything beyond this will be in- 
fringement. And it is no justification of the infringement of 
a re-issued patent, that the infringer had used the invention 
with impunity before the re-issue : Howe v. Williams^ 2 Fisher 
395. 

The identity which will constitute an infringement is not 
necessarily exact similarity — substantial identity is sufficient. 
Two machines, for example, may be dissimilar in appearance, 
and may employ diflPerent devices, yet if they have the same 
mode of operation, if they effect substantially the same result 
in substantially the same way, one will be an anticipation 
or an infringement of a patent for the other, according as it is 
of earlier or later construction. It will not alter the case 
that one may attain the result more perfectly than the other, 
if the same substantial means and mode of operation are em- 
ployed. 

To constitute an infringement, the thiug used must be so 
near to that set forth in the patent as substantially to embody 
the patentee's mode of operation, and thereby attain the same 
kind of result as was reached by his invention. It is not 
necessary that the defendant's device should employ the plain- 
tiff's invention to as good advantage as he employed it, or that 
the result should be precisely the same in degree : Winans v. 

9 



130 INFRINGEMENT — SUITS FOR. 

Denmead, 15 Howard 330. So that, as infringement will not 
be avoided by addition or improvement, if substantially the 
same result be obtained by substantially the same means, in 
substantially the same way ; so also, under like conditions, it is 
not necessary, to constitute an infringement, that the alleged 
infringing device should be as perfect in operation as that 
patented. 

It has been held in one case ( Wliittemore v. Cutter, 1 Gall. 
429), that to make a patented machine merely for philosophical 
experiment, or for the purpose of ascertaining the sufficiency 
of the machine to produce its described effects, is not an in- 
fringement ; but that the making, for which action is given by 
the statute, is the making of a thing fit for use, and with a 
design to use it for profit. 

In Brown v. Duchesne, 19 Howard 183, the Supreme Court 
held that the exclusive right granted to a patentee does not 
extend to authorizing the prevention of the use upon a foreign 
vessel entering a port of the United States, of an improvement 
patented here, if the improvement has been applied to the vessel 
in a foreign country, and the application was authorized by the 
laws of the country to which the vessel belongs. 

The sale or use of the product of a patented machine is no 
violation of the patent : Goodyear v. Central Railroad, 1 Fisher 
626. The sale by a sheriff, under an execution, of the materials 
of a patented machine, is not an infringement ; but the pur- 
chaser does not, with the materials of the machine, take any 
right to use the machine in the manner pointed out in the 
patent : Sawin v. Guildy 1 Gall. 485. To use the machine 



ACTION AT LAW — IN EQUITY. 131 

without authority from the patentee, or those holding title 
under him, will be an infringement. 

The purchaser of a patented article from one having a right 
to make and vend it, within a given portion of the United 
States, may, if his purchase has been unconditional, use or sell 
it anywhere, and will not be an infringer, even though he use 
it within the territory owned by another grantee under the 
patent. 

All actions, suits, controversies and cases arising under the 
Patent Laws of the United States are originally cognisable, as 
well in equity as at law, by the Circuit Courts of the United 
States, or any District Court having the power and jurisdiction 
of a Circuit Court, or by the Supreme Court of the District of 
Columbia, or of any territory. 

Of the courts here indicated, the particular one to be re- 
sorted to in any given case, must be that of a district in 
which the plaintiff is interested in the patent, and in which 
the alleged infringer may reside or be found. 

Besides pointing out the several courts in which remedy for 
infringement may be obtained, the foregoing paragraph indi- 
cates two modes of procedure, between which the injured party 
may make his election, i. e., action at law or suit in equity. 

As to the remedy at law, ^' damages for the infringement of 
any patent may be recovered by action on the case, in the name 
of , the party interested, either as patentee, assignee or grantee. 
And whenever in any such action a verdict is rendered for the 



132 INFRINGEMENT — SUITS FOR. 

plaintiff, the court may enter judgment thereon for any sum 
above the amount found by the verdict as the actual damages 
sustained, according to the circumstances of the case, not ex- 
ceeding three times the amount of such verdict, together with 
the costs:'' Sec. 4919, R. S. 

This power conferred upon the courts to enter judgment 
for punitive damages in aggravated cases of infringement ma- 
terially increases the efficacy of the patentee's remedy at law. 

But the recovery of damages ever so exemplary for past 
infringement is usually a ver'y incomplete remedy, unless accom- 
panied by a restraint of infringement in the future ; and as a 
court of law cannot give this preventive remedy, it must be 
sought in a court of equity. It is provided, therefore, that any 
one of the courts above named " shall have power,(upon bill in 
equity, by any party aggrieved), to grant injunctions according 
to the course and principles of courts of equity, to prevent the 
violation of any right secured by patent, on such terms as the- 
court may deem reasonable:'' Sec. 4921, R. S. 

Long prior to the Act of 1870, it had been determined that 
the courts having jurisdiction in equity of controversies upon 
patents, do not act as ancillary to a court of law, and do not 
require a patentee first to establish his legal right in a court 
of law, and by the verdict of a jury, before they will interfere, 
but will themselves consider and determine any disputed ques- 
tions of fact arising. Accordingly, very much the larger pro- 
portion of cases were brought in the first place on the equity 
side of the courts, both on account of the preventive remedy 
thus attainable, and because the parties interested were gener- 



ACTION AT LAW — IN EQUITY. 133 

ally disposed to regard it as an advantage, rather than the 
contrary, to have the disputed questions of fact arising, as well 
as those of law, considered and determined by the court with- 
out the intervention of a jury. 

Under the Act of 1836, however, a court of equity could not 
award damages, actual or punitive : so that where this remedy 
was desired, action must be brought on the law side of the 
court. 

But in the Act of 1870, it is provided, that upon decree being 
rendered in any such case in equity for an infringement, the 
complainant shall be entitled to recover, in addition to the profits 
to be accounted for by the defendant, the damages the complain- 
ant has sustained thereby, and the court shall assess the same, 
or cause the same to be assessed under its direction ; and the 
court shall have the same powers to increase the same in its 
discretion, that are given to increase the damages found by 
verdicts in actions upon the case : Sec. 4921, R. S. 

As this provision adds to the powers of the courts of equity, 
those belonging to courts of law in such cases, it is to be pre- 
sumed that actions on the case for infringement will be less 
frequent than even before the Act of 1870, and will be resorted 
to only in cases where injunction and account form no part of 
the remedy sought for, as where the patentee has established a 
license-fee for the use of his invention, and the damage suffered 
is the use without payment of this license-fee ; so that there is 
a complete remedy at law. 

The question who may sue for infringement is answered by 



134 INFRINGEMENT — SUITS FOR. 

Sec. 4919, R. S., which states that " action on the case for 
damages must be in the name of the party interested, either as 
patentee, assignee or grantee •,'' in other words, of the person 
or persons having the legal title to the patent within the judicial 
district in which suit is brought, at the time the infringement 
may have been committed: Moore y. Marshal Wallace 515. 
An assignment of, or grant of exclusive right in, a patent, does 
not carry with it the right to damages for infringements 
committed before the assignment or grant: Id. A licensee 
cannot sue in his own name, though he may be the party 
immediately injured, nor at law can a licensee join in an 
action as co-plaintiff with the holder of the legal title ; but in 
equity the owner of the legal title, and the licensee or party 
equitably entitled to the damages, as the person immediately 
injured by the infringement, are the proper parties to a bill 
for an injunction : Goodyear v. N. J. Central Railroad Co.^ 1 
Fisher 626. Where the grantee of the legal title is dead, the 
right of action is in his administrators. 

Although the state courts have not cognizance of suits for 
infringement of patents, there are cases in which they can and 
indeed must inquire into their validity. These are cases in 
which the immediate cause of action is a dispute relative to a 
contract based upon patent property. 

Such actions ex contractu are not cases arising under the Pat- 
ent laws, of which exclusive jurisdiction is conferred upon the 
courts of the United States, and those courts cannot take cog- 
nizance of them, unless jurisdiction is conferred by the parties 
being resident in different states. 



DEFENCES. 135 



Where the action arises out of contract and the parties are 
residents of the same state, the fact that the contract concerns 
a patent of the United States, does not oust the state courts of 
their jurisdiction, or confer it upon the courts of the United 
States ; and where in such a case before a state court, the valid- 
ity of a patent comes collaterally into question, it will be con- 
sidered and passed upon : Rich v. Hotchkiss, 16 Conn. 414. 

On the other hand, if in an action in a court of the United 
States for infringement, collateral questions arise as to the 
effect or validity of a contract, the court, if infringement be 
found, may consider the question of contract. 

The defendant in an action at law for infringement may 
plead the general issue, and under it may show that he has 
not infringed, i. e., either that the thing made, used or sold 
by him and claimed to be similar to that covered by tha 
patent, is not so in fact, or that the making, using or selling 
was b}'- license or authority from plaintiff, or that plaintiff has 
not a good title, or that the patent is void for an ambiguous 
or unintelligible specification, or that the invention, admitting 
its novelty, is not a patentable subject. 

There are certain other defences which can be made under 
the general issue,.but not without notice in writing to plaintiff 
or his attorney, given thirty days before trial : Sec. 4920, R. S. 

The special matters, to the proving of which at the trial this 
notice is a condition precedent, are as follows : 
. 1. That for the purpose of deceiving the public, the descrip- 
tion and specification filed by the patentee in the Patent Office 



136 INFRINGEMENT — SUITS FOR. 

was made to contain less than the whole truth relative to his 
invention or discovery, or more than is necessary to produce 
the desired effect. 

2. That he had surreptitiously or unjustly obtained the 
patent for that which was, in fact, invented by another, who 
was using reasonable diligence in adapting and perfecting the 
same. As to the meaning of this defence, see Chap. II. 

3. That it had been patented or described in some printed 
publication, prior to his supposed invention or discovery 
thereof. 

4. That he was not the original and first inventor or dis- 
coverer of any material and substantial part of the thing 
patented. 

5. That it had been in public use or on sale in this country 
for more than two years before his application for a patent, or 
had been abandoned to the public. 

Notices of the second, third or fourth of these special de- 
fences must state the names of patentees, and the dates of their 
patents, and when granted, and the names and residences of 
persons alleged to have invented or to have had the prior 
knowledge of the thing patented, and where and by whom it 
had been used. 

As to the requisite particularity of the notice, the party 
giving notice is not bound to be so specific as to relieve the 
other from all inquiry or effort to investigate the facts. If he 
fairly puts the adversary in the way that he may ascertain all 
that is necessary to his defence or answer, it is all that cen be 
required, and he is not bound by his notice to impose an un- 



PRELIMINARY INJUNCTIONS. 137 

necessary and embarrassing restriction on his own right of pro- 
ducing proofs of what he asserts : Wise v. AUis, 9 Wallace 737. 

*^ If any one or more of the special matter of defence of which 
due notice shall have been given, be found for the defendant, 
judgment will be rendered for him with costs. 

*' The like defences may be pleaded in any suit in equity for 
relief against an alleged infringement, and proofs of the same 
may be given upon like notice in the answer of the defendant 
And in equity no proof will be received in support of ant/ 
defence not specifically set up in the answer. 

Where the patentee's title seems clear beyond reasonable 
doubt, and infringement is admitted or evident, the courts in 
equity may grant provisional or preliminary injunction, upon 
motion after the filing of bill of complaint, and reasonable 
notice given of the application to defendant. This extraordi- 
nary remedy may be granted where the patent is of long stand- 
ing and the patentee has been in undisputed exclusive pos- 
session, or the patent has been litigated and sustained after full 
hearing. But the grant of a preliminary injunction cannot be 
claimed as matter of right upon any given state of facts (Potter 
V. Whitney, 3 Fisher 77), but rests in the discretion of the 
court, which may grant or refuse it, unconditionally, or upon 
conditions imposed either on complainant or defendant. In 
granting or refusing a preliminary injunction, the court will 
carefully consider the situation of the parties. Its important 
office is to preserve the rights of the patentee pending the liti- 
gation of his title. If the title has already been fully estab- 



138 INFRINGEMENT — SUITS FOR. 

lislied, or is otherwise so clear that no reasonable doubt of its 
validity remains, a court of equity would, in many cases, grant 
such an injunction as it would afinal injunction, notwithstand- 
ing the injury which might result to the defendant. But 
where there is no danger of loss to plaintiff, and great loss will 
result to defendant, the case must be substantially free from 
doubt to require such action. And it is a material circum- 
stance to be considered whether defendants are fully responsi- 
ble for any profits or damages which may be decreed against 
them : Morris v. Lowell Manvfacturing Co., 3 Fisher 67. 

Where a preliminary injunction has been granted, it may be 
dissolved, upon motion of defendant, upon sufficient cause 
shown, as, e. g., conclusive evidence impeaching the novelty of 
the patented invention. 

If, after hearing upon the pleadings and full proofs, com- 
plainant's title is upheld and infringement found, part of the 
decree is for final injunction, unless the patent has expired, 
when the decree will be for an account and assessment of 
damages. 

The cause is then referred to a master to take proofs and 
report to the court upon these points. To the master's report 
either party may file exceptions, and after these are argued, 
and disputed points determined, there is a final decree for 
profits and damages. 

Patent causes may be carried from any of the courts of 
original jurisdiction to the Supreme Court of the United States, 
by writ of error in the case of an action at law, or by appeal 



MARKING PATENTED ARTICLES. 139 

in equity. A decree for injunction and account is not a final 
decree from which appeal can be taken: Humiston v. Stain- 
thorp, 2 Wallace 106. Appeal cannot be taken until after 
decree, leaving no points to be settled. 

Writ of error or appeal should be brought or taken within 
two years, and may be taken without regard to the sum or 
value in controversy : Sec. 699, R. S. 

By Sec. 4900, R. S., it is made the duty of ^'all patentees, 
and their assigns and legal representatives, and of all persons 
making or vending any patented article for or under them, to 
give sufficient notice to the public that the same is patented, 
either by fixing thereon the word ^ patented,^ together with the 
dai/ and year the patent was granted, or when, from the char- 
acter cr the article, this cannot be done, by fixing to it or to 
the package wherein one or more of them is enclosed, a label 
containing the like notice." 

In a suit for infringement, brought by a party who has 
failed to comply with this provision, he cannot recover 
damages, except on proof that the defendant was duly notified 
of the infringement, and continued, after such notice, to make 
or vend the article so patented. 

In connection with this rule, requiring patented articles to 
be marked with the date of the patent, reference may be made 
to Sec. 4901, R. S. If any person in any manner mark upon 
or affix to an unpatented article the word ^ patent,' or any 
word importing that it is patented, /or the purpose of deceiving 



140 



FRAUDULENT PATENT MARKS. 



the public, or if he in any manner mark upon anything made, 
used or sold by him for which he has not obtained a patent, 
the name or imitation of the name of any person who has ob- 
tained a patent therefor, without the consent of such patentee, 
his assigns or legal representatives, or in any manner mark 
upon or affix to any such patented article the word * patent' 
or ^ patented,' or the words ' Letters Patent,' or any word of 
like import, with intent to imitate or counterfeit the mark or 
device of the patentee, without having the license or consent 
of such patentee, or his assigns or legal representatives, he is 
liable for every such offence, to a penalty of not less than one 
hundred dollars, with costs ; one-half of said penalty to the 
person who shall sue for the same, and the other to the use of 
the United States, to be recovered by suit in any District 
Court of the United States, within whose jurisdiction such 
offence may be committed." 



CAVEATS — BY WHOM THESE MAY BE FILED. 141 



CHAPTER XL 

Caveats. 

Any citizen of the United States who makes any new 
invention or discovery, and desires further time to mature 
the same, may, on payment of ten dollars, file in the Patent 
Office a caveat, setting forth the design thereof and its dis- 
tinguishing characteristics, and praying protection of his right 
until he shall have matured his invention. Such caveat shall 
be filed in the confidential archives of the office, and preserved 
in secrecy, and shall be operative for the term of one year from 
the filing thereof; and if application is made within the year 
by any other person for a patent, with which such caveat 
would in any manner interfere, the Commissioner shall deposit 
the description, specification, drawings and model of such ap- 
plication, in like manner, in the confidential archives of the 
office, and give notice thereof, by mail, to the person by whom 
the caveat was filed. 

If such person desires to avail himself of his caveat, he shall 
file his description, specifications, drawings and model, within 
three months from the time of placing the notice in the post- 
office in Washington, with the usual time required for trans- 
mitting it to the caveator added thereto ; which time shall be 
endorsed on the notice. An alien shall have the privilege here- 



142 CAVEATS. 



1 



in granted, if he has resided in the United States one year next 
preceding the filing of his caveat, and has made oath of his in- 
tention to become a citizen. Sec. 4902, R. S. 

A caveator is not entitled to notice of any application pend- 
ing at the time of filing his caveat, nor of any application filed 
at the expiration of one year from the date of filing ; he may, 
hovrever, renew his caveat for one year on the expiration of the 
first, on payment of ten dollars, and so on, year after year. 
Caveats, w^hether in force or expired, are retained in the secret 
archives of the office, and are not accessible, save to the caveator, 
or by those authorized by him to see it. 

A caveat, before it can be filed, must be accompanied with 
an oath of the caveator, setting forth that he is the original and 
first inventor of the improvement claimed, and that he is a cit- 
izen of the United States, or an alien, who has resided within 
the United States for one year, and has made oath that he in- 
tends to become a citizen. The description need not be as par- 
ticular as that in a specification of a patent, but should be suffi- 
ciently precise to enable the Patent office to judge whether there 
is a probable interference with an application subsequently 
filed. A caveat must be confined to one invention. Caveat 
papers, after filing, cannot be withdrawn for alteration j but 
additional papers will be received and filed, on payment of an 
additional fee of ten dollars. 

Copies of caveats may be procured by the caveator or other 
person authorized by him. When practicable, a caveat should 
be accompanied by drawings made on paper or muslin, capable 
of being folded, and of the same size as patent-drawings. 



EFFECT OF CAVEAT. 143 



A caveator is not prejudiced by a patent issued to another 
without notice to him, though he be not first to adapt his inven- 
tion to practical use, provided he use reasonable diligence in 
perfecting his discovery, and in an action for infringement of a 
patent so issued, the omission to give notice to the caveator 
may be set up as one of the defences under sec. 4920, R. S., as 
proof that the patentee had surreptitiously or unjustly ob- 
tained the patent for that which was, in fact, discovered by 
another, who was using reasonable diligence to adapt and per- 
fect the same : Phelps v. Brown & Bros.j 1 Fisher 479. 

The filing of a caveat will not save the inventor's rights 
against that provision of the statute which bars the right to a 
patent, if the invention has been in public use, or on sale with 
his consent and allowance, for more than two years before ap- 
plication for patent: Bell v. Daniels, 1 Fisher 377. 

Although a caveat implies that the caveator, at the time of 
filing it, does not regard his invention as brought to that state 
of perfeation which he desires, and in the petition and oath 
the caveat is stated to refer to an invention which the party 
filing it is experimenting to perfect, it is not conclusive evi- 
dence that the invention is only part perfected, in the sense 
which the law gives to that word : Johnson v. Roolj 1 Fisher 
351. A person, said the court, in that case, may choose to file 
a caveat while he is going on and making improvements upon 
an invention which he has already completed so as to be of 
practical utility. 

A caveator may, therefore, show that, at the time of filing 
his caveat, the invention described 'therein had been demon- 



144 



strated to be practically operative, by actual use, and may thus 
rebut the contrary presumption arising from the nature and 
s.tatements of a caveat. 

But a caveat, not being a publication, can never be, in itself ^ 
evidence of complete invention, however full and accurate its 
description may be. 

It is common to speak of caveats as affording a temporary 
protection, thus giving many inventors a mistaken notion that 
they are a kind of temporary patent, conferring an exclusive 
right to make, use and sell the invention. 

But a patent is a grant from the Government, which can 
only be based upon the disclosure of a completed invention. 
A caveat, on the contrary, is merely the act of the inventor in 
reference to an invention which he regards as incomplete, and 
therefore not yet in condition to be patented. 

He may fear that during the time he requires to mature the 
invention, some one else may apply for and obtain a patent for 
it, and he, therefore, files his caveat, '* praying protection of 
his right, until he shall have matured his invention." He 
must diligently proceed to mature it in order to preserve his 
right; the ^'protection" which his caveat affords him being 
simply that it requires the Commissioner of Patents to notify 
him if, within the year for which the caveat is in force, another 
party seeks to patent the same invention ; after which notice 
the caveator has three months within which to file his own ap- 
plication, if he desires to contest the question of priority and 
the right to a patent. 



EFFECT OF CAVEAT. 145 



This is the entire office of a caveat, its purpose being, as 
expressed in Phelps v. Brown, 1 Fisher 479, to save an inven- 
tor from the effect of the rule of law which gives to the inven- 
tor who first adapts his invention to a practical use the right 
to a patent. Our readers will recall the mention made in an 
earlier chapter of the exception to this rule in favor of the 
first to invent, who shall use reasonable diligence to perfect his 
invention and adapt it to use. Such a reasonably diligent 
inventor will not, by electing not to file a caveat, lose the 
benefit of this provision in his favor ; nor, by the filing of a 
caveat, will he relieve himself from the duty of reasonable dili- 
gence to perfect and adapt his invention to use. But a caveat is 
calculated to prevent him from being placed at a disadvantage 
by the issue, while he is diligently completing his invention, 
of a patent to another, who, later in inventing, may have been 
able first to complete the invention, or who may have pirated 
the idea from him. The filing of a caveat may also tend to in- 
dicate diligence on the part of the inventor ; but it neither con- 
fers any rights nor creates any presumptions in his favor be- 
yond the term during which it is in force ; nor will it operate 
to relieve him from the consequences of deliberate, unmis- 
takable abandonment, or of causing or allowing his invention 
to be in public use, or on sale, for more than two years before 
applying for a patent. 
10 



146 DESIGN PATENTS. 



CHAPTER XIV. 
Design Patents. 

Any person who, by his own industry, genius, efforts and 
expense, has invented and produced any new and original 
design for a manufacture — bust, statue, alto-relievo, or bas- 
relief; any new and original design for the printing of woollen, 
silk, cotton, or other fabrics j any new and original impression, 
ornament, pattern, print or picture to be printed, painted, 
cast, or otherwise placed on or worked into any article of 
manufacture, or any new, useful and original shape or con- 
figuration of any article of manufacture, the same not having 
been known or used by others before his invention or pro- 
duction thereof, or patented or described in any printed publi- 
cation, may, upon payment of the fee prescribed, and other 
due proceedings had the same as in cases of inventions or 
discoveries, obtain a patent therefor : Sec. 4929, R. S. 

Patents for designs may be granted for the term of three 
years and six months, or for seven years, or for fourteen years, 
as the applicant may in his application elect: Sec. 4931, R. S. 

An extension cannot afterwards be obtained of the term 
selected, under the Act of July 1870. 

Under the Act of 1861, design patents might be extended, 



DESIGNS, WHAT ARE. 147 



and after the passage of the Act of 1870 the question arose in 
the Patent Ofl&ce whether a patent granted under the Act of 
1861 could then be extended. 

The question was decided in the negative (C. D. 1870, p. 39), 
but the decision perhaps involved a somewhat narrow con- 
struction of the effect of that proviso in the clause of the Act 
of 1870 repealing prior acts, which provides that the repeal 
*^ shall not affect, impair or take away any right existing under 
any of said laws." 

All the regulations and provisions which apply to the obtain- 
ing or protection of patents for inventions or discoveries, not 
inconsistent with the provisions of the Designs Act, apply to 
patents for designs : Sec. 4933, R. S. 

The thing invented or produced for which a design patent is 
given is that which gives a peculiar distinctive appearance to 
the manufacture or article to which it is applied, and identity 
of appearance, or sameness of effect upon the eye, is the main 
test of substantial identity of design. It is not essential to 
identity of design that the appearance should be the same to 
the eye of an expert. If, in the eye of an ordinary observer, 
givinor such attention as a purchaser usually gives, two designs 
are substantially the same, if the resemblance is such as to 
deceive such an observer, and sufficient to induce him to pur- 
chase one supposing it to be the other, the one first patented is 
infringed by the other: Gorham Manufacturing Co. v. White, 
14 Wallace 511. 

Reported decisions of the Federal courts in cases upon 



148 DESIGN PATENTS. 



design patents are very few, and there are some points in the 
law which have not been distinctly settled in the courts. One 
of these is the meaning of the phrase ^* new, useful and 
original shape or configuration of any article of manufacture," 
as employed in the statute, whether by ^^ useful" is meant 
utility in an aesthetic sense, or whether it is to be so construed 
that a new shape or configuration of an article of manufacture, 
where it is matter not of ornament, but useful in relation to 
the uses or mechanical functions of the article itself, may be 
patented as a design. 

At one time the latter view was taken in the Patent Ofl&ce, 
even under the Designs Act of 1861, in which the word useful 
was not employed : C. D. 1869, p. 7 ; Id. p. 105. 

And in one decision at least subsequent to the Act of 1870, 
this view was regarded as being warranted by the insertion of 
the word ^'useful" in that Act (C. D. 1871, p. 53), and it was 
held that " if a new and at the same time useful shape be 
devised for a particular article of manufacture, even though no 
ornamental efi*ect be produced thereby, the inventor is entitled 
to protection for it under the Designs Act." 

But latterly the opposite doctrine has prevailed in the Patent 
Office : C. D. 1871, p. 251 ; 4 0. G. 691. 

And it may at present be considered the established doctrine 
in the Patent Office that utility in a functional sense is not an 
element of patentability as a design, and that the *^ new, 
useful, and original shapes and configurations of any article of 
manufacture" contemplated by the Designs Act, are shapes 
and configurations for ornamental eflect, matters of appearance. 



USEFUL DESIGNS, MEANING OF. 149 



This view seems to be the one most consonant to the lan- 
guage and reasoning of the Supreme Court in Gorham Manu- 
facturing Co. V. White, though it is to be observed that that 
case arose, not under the present Designs Act, but under the 
Act of 1861, and that the matter at issue before the court did 
not directly involve this particular question. 

But in deciding the point actually at issue, the court took 
occasion to say, *' the Acts of Congress which authorize the 
grant of patents for designs were plainly intended to give en- 
couragement to the decorative arts. They contemplate not so 
much utility as appearance." And the test of infringement 
proposed is simply *^ similarity or dissimilarity of appearance." 

The decision in C. D. 1869, p. 7, that design patents could be 
granted for new and functionally useful shapes and configura- 
tions of articles of manufacture, appears to have been largely 
based upon the assumption that '' there is a large class of im- 
provements in manufactured articles which add to their market 
value and saleability, and often result from the exercise of much 
labor, genius and expense, but which are not regarded as new 
inventions, or as coming within the general scope of the Patent 
laws, although they promote the best interests of the country, 
as well as the creations of inventive genius J'' 

But the ground of this implied exclusion of improvements of 
the class referred to from the category of *' creations of inventive 
genius ^' is not quite clear, especially if, as it is stated, they often 
dp result from the ^' exercise of much labor, genius and ex- 
pense." 



150 DESIGN PATENTS. 



It is well understood that the law is not exacting as to the 
degree of inventive genius " requisite to support a patent," but 
demands simply that something more shall appear than the 
exercise of that ordinary skill and judgment which maybe 
considered to belong to persons conversant with the particular 
art to which the invention belongs. 

A new shape or configuration, answering a functionally use- 
ful end, must be the product either of ordinary skill and judg- 
ment, or of that " something more ^' which will suffice to support 
a patent. 

If then it is not ^' within the scope of the general patent 
laws '■ it must be either because it involves no more than the 
exercise of ordinary skill and judgment, or because the general 
patent laws do not contemplate the protection of aiiT/ novelties 
of that class. 

That the latter is not the case numerous authorities go to 
prove. Changes of form and proportion, unattended with any 
new or improved result, are not patentable. Otherwise, if 
there be such a result, serving to indicate the exercise by the 
originator of that degree of inventive genius, which the law 
calls for. 

The only remaining question, therefore, is whether the De- 
signs LaAV is intended to protect, among other things, new and 
functionally useful shapes and configurations of articles of 
manufacture which are not ^' within the scope of the general 
patent law," because they are the results of the exercise of 
ordinary skill and judgment, and not ''creations of inventive 
genius." 



USEFUL DESIGNS, MEANING OF. 151 

Such a construction of the law manifestly would make its 
operation mischievous, rather than beneficial, and would estab- 
lish a distinction in favor of one particular class of improve- 
ments without apparent reason. 



TARIFF OF FEES. 



On filing every application for a design patent for three years 

and six months, $10 00 

On filing every application for a design patent for seven years, 15 00 
n filing every application for a design patent for fourteen years, 30 00 
On filing every caveat, . . . . . . . . 10 00 

On filing every application for a patent for an invention or dis- 
covery, ; . . . . 15 00 

On issuing each original patent for an invention or discovery, 20 00 

On filing a disclaimer, 10 00 

On filing every application for a re-issue, . . . . . 30 00 
On filing every application for a division of a re-issue. . . 30 00 
On filing the first appeal from a primary examiner to examiners- 
in-chief, 10 00 

On filing an appeal to the Commissioner from examiners-in- 
chief, 20 00 

For every certified copy of a patent or other instrument, for 

every 100 words, 10 

For certified copies of drawings, the reasonable cost of making 

them. 
For recording every assignment of 300 words or under, . . 1 00 
For recording every assignment, if over 300 and not over 1000 

words, 2 00 

For recording every assignment, if over 1000 words, . . 3 00 

For uncertified copies of the specifications and accompanying 
drawings of patents issued since July 1st 1871 — 

Single copies, 25 

Twenty copies or more, whether of one or several patents, per 

copy, 10 

For uncertified copies of the specifications and drawings of 
patents issued prior to July 1st 1871, the reasonable cost of 
making the same. 

(152) 



INDEX. 



Abandonment of application not abandonment of invention, 93, 94. 
of claim under original patent by surrender and re-issue, 112. 
of invention, what is, and how to be proved, 31, 32. 
when may be inquired into in interference cases, 90. 
Abstract, discovery not patentable, 35-38. 
Abstraction, not patentable, whether termed principle, function, or 

mode of operation, 45. 
Action for infringement, defences, 136-138« 

in what courts brought, 132. 
on the case for infringement, 132, 133. 
Administrator, may obtain patent, 19. 
may sue for infringement, 138. 
to apply for patent if inventor be dead, 19, 
Aggregation, mere, not patentable combination, 57, 58. 
Aliens, can obtain United States patents, 20. 

Allowance, of patent, final fee to be paid within six months from, 95. 
Amendment, of application, 85. 
Appeals, interlocutory, 85-87. 
to commissioner, 85. 

examiners-in -chief, 85. 
Supremo Court, District Of Columbia, 85. 
Supreme Court, United States, 138. 
Applicant, may present arguments to overcome rejection, 85. 

to make oath or afiirmation, 71. 
Application for patent, 70-95. 

abandonment of, by failure to complete or prose- 
cute it within two years, 93. 
allowance of, 95, 
amendment of, 85. 

examination reviewed after first rejection, if required, 85. 
official examination of, 84-95. 
rejection of, 85. 

to be made by inventor, if living; if dead, by executor or admin- 
istrator, 19. 
what is required of the inventor, 70-75. 
' for re-issue, to undergo examination. 111. 

cannot be put in interference with a later patent. 111. 

(153) 



154 



Application for re-issue, drawings or models not to be altered, excepting 
each by the other, 110. 
interfering, 96-9v^. 

new, of a property in nature not before known or used, to some 
new and useful results, held to be patentable, independent 
of any new or peculiar arrangement of machinery, 38. 
when patent is forfeited by non-payment of second fee, 95. 
of patented improvements to foreign vessels, when no infringe- 
ment, 131. 
rejected and withdrawn, prior to July 8th 1870, and not re- 
newed within six months, is abandoned, but new application 
may be made, 93, 94. 
rejected, prosecution of by bill in equity, 88, 89. 

and abandoned, not evidence to defeat a patent, 94. 
time for completing, 93. 
Art, includes processes, 34. 

meaning of the word, in statute, 34. 

new and useful, or useful improvement in old, patentable, 34. 
Articles of manufacture, patentability of, independent of mode of pro- 
duction, 65-67. 
what are patentable, 65-67. 
Assignee, may make application for re-issue of patent assigned to him, 
prior to July 8th 1870, 110. 
may file disclaimer, 103-105. 
may sue for infringement, 134, 135. 
of inventor or discoverer, patents granted to, after recording 

assignment, 19, 113, 114. 
of part interest, cannot grant exclusive right or license, 117. 
cannot sue alone for infringement, 117. 
Assignment and grant of exclusive right, distinction between, 116. 

before patent, if patent is to be granted to assignee, must con- 
tain request to that effect, 114. 
does not of itself create co-partnership or mutual accounta- 
bility, 116. 
no particular form of, required, 118, 119. I 

of future invention, effect of, 115. 

invention, may be made before patent, 113-115. 
patent, 116, 117. 
or grant, void as against suDsequent purchaser without notice, 
unless recorded within three months from date, 119. 
must be recorded, to enable assignee or grantee to bring 
suit in his own name, but record may be after suit 
brought, 120. 
recording, not pre-requisite to operation, 119. 
Assignor and assignee, relation of in regard to patent, 116, 117, 
Capital and patents, 17, 18, 
Caveats, 141-145. 



INDEX. 155 



Caveats, effect of, 143, 145. 

filing, what required, 142. 

may be renewed, 142. 

must be confined to one invention, 142. 

not conclusive evidence of incomplete invention, 143. 

not evidence of completed invention, 144. 

oath for, 142. 

protection aff'orded by, 144, 145. 

to be accompanied by drawings when practicable, 142. 

who may file, 141, 142. 
Changes, mere, of material or form not patentable, 54. 
Claims, 76-83. 

are construed liberally by the courts, 81. 

broader than the invention, bad, 83. 

functional, not allowable, 46. 
what are, 46. 

invalidity of one of several, does not invalidate patent, 82, 1(^, 
103, 129. 

inventor to see that they cover his whole invention, 80. 

patent may contain as many as there are novel points in the in- 
vention, 82. 

to be construed in connection with the body of the description, SI. 

too broad, remedied by re-issue, 106, 107 
disclaimer, 102. 
remedies for, 102-110. 

too limited, remedied by re-issue, 107, 108 
Combinations, infringement of, 128. 

not the same if one substantially differs from the other in any 
one of its parts, or in the number of essential parts, 61, 62. 

of parts, must co-operate to attain some one result, to be patent- 
able, 58, 59. 

patentability of, determined by reference to the result and to the 
number, character and relation of parts, 60, 62. 

patentable, may consist of parts new or old, 59. 
what is, and what is not, 57-65. 

patentee of, entitled to equivalents, 63. 

to be regarded as a unit, 60. 
Commissioner of Patents, appeal to, 85-87. 

cannot annul a patent granted, 99. 

when may issue second patent for same invention, 99. 
Complete invention, caveat i-ot evidence of, 144. 
Composition of matter, doctrine of equivalents, 68. 

new or improved, patentable, 34, 35. 

what is the meaning of term in statute, 35. 

when patentable, 67-68. 
Conception, not embodied unpatentable, 13. 

of invention, what constitutes, 23. 



156 



Concession of priority in interference, 98. 

Constitution United States empowers Congress to enact patent laws, 11. 

Contract concerning patents, action upon, state courts have jurisdiction 

of, 135. 
Co-operation of parts in combination, what meant by, 58-59. 

of parts necessary to patentable combination, 58-59. 
Courts, in what, action to be brought for infringement, 132. 

state, have jurisdiction of actions upon contracts concerning 
patents where parties reside in same state, 135. 
no jurisdiction in actions for infringement, 135. 
when they may inquire into validity of -patent, 135. 
Damages for infringement, 132, 133. 

court of equity may award, 134. 
Defence, special notice of, 136, 137. 
Design patents, 146-150. 

duration of, 146. 

extension of, none, under law of July 1870, 146. 
test of infringement, 147. 
Defence to action for infringement, 136-138. 
Diligence in perfecting invention necessary to preserve rights, 22, 26. 

reasonable, in perfecting invention, what is, 25-26. 
Disclaimer as a remedy for claims too broad, 102. 

considered part of patent to extent of interest of party filing it, 

102-105. 
for what made, and by whom, 102-106. 
form and requisites, 102, 105. 

if not filed before action no costs can be recovered, 103. 
may be filed before or after bringing action for infringement, 

102, 103. 
not to affect any pending action unless in cases of unreasonable 

neglect in filing, 102. 
to what cases applicable, 102, 103, 105. 
unreasonable neglect to file, what is, and what is not, 104. 
who may file, 103, 105. 
Discovery, abstract, not patentable, 35-38. 

patentable, is one usefully applied to some end in the practical 

arts, 35. 
what and how patentable, 38-44. 
Double use, not y>atentable, what is, 47-54. 
Drawings, when requisite, 71. 

to accompany caveats when practicable, 142. 
Employer and employee, relation of in respect to invention, 24-25. 
Equity, bill in, in case of rejected applicatian, 88. 
to annul interfering patent, 99-100. 
court of, may award dam acres, 134. 
of patents in limiting grants to first inventors, 12, 13. 
suit in, for infringement, 133, 134. 



INDEX. 15T 



Equivalents, doctrine of, as applied to composition of matter, 68. 
in case of combination, what are, 63, 64. 
of devices or things described and claimed by the patentee 

covered by the patent, 55, 
what are, 55-56. 
Error, writ of, 139. 
Evidence, caveats as, 143, 144. 
Examiners, duties of, 84-85. 

in chief, appeal to, 85. 
Examiner of Interferences, duties of, 96-98. 
Examination, official, of application for patent, 84-95. 

official, restricted as a rule to prior patents and printed publica- 
tions, 90. 
Executor. See Administrator. 
Experiment, philosophical, held no infringement, 131. 

crude and imperfect, do not entitle to a patent, 20. 
Experimental use for more than two years before application, not a bar 

to a patent, 32. 
Fee, final, to be paid within six months after allowance of patent, 95. 
Fees, table of, 152. 

First to apply for patent considered first inventor, in absence of testi- 
mony, 98. 
Foreign patent, effect of, on application, 72-73. 

prior invention will not defeat United States patent, unless 
patented or published, or known to patentee at the time of 
his application : Sec. 4923, R. S., 29-30. 
vessels, use of patented inventions on, 131. 
Forfeited application, 95. 
Form, mere, changes of, not patentable, 54. 
Fraudulent use of patent marks, penalty for, 140. 
Functional claims, bad, 46. 

Government does not guarantee validity of patents, 101. 
Grant of exclusive right, difference between, and assignment, 116. 
meaning and effect of, 118. 
must be recorded (see Assignment), 119. 
no particular form required, 118, 119. 
Grantee of exclusive right can file disclaimer, 103, 105. 

may sue for infringement, or give exclusive 
license, 118, 134, 135. 
Improvements on existing subjects, patented or not, are themselves 
patentable, 68. 
patent for, does not entitle patentee to use the original without 
consent, 69, 129. 
Infringements, 127-132. 

action for, in what courts brought, 132. 

defences to, 136-138. 
action on the case for, 132-133. 



158 INDEX. 



Infringements, by making, using or selling, 127-129. 
not avoided by addition or improvement, 129. 
of combination, 128. 
design patents, 147. 

one of several claims, action may be sustained for, 129. 
patentee, assignee or grantee of exclusive right may sue for, 134, 

135. 
restrained by injunction, 133. 

sale by sheriff of materials of patented machine is not, 130. 
sale or use of product of patented machine is not, 131. 
substantial identity, 130, 131. 

suits for, can be brought by executor or administrator, 135. 
suit in equity for, 133-134. 
to make without using, 127. 
court may treble damages for, 132-133. 
Infringer cannot defend on the ground of fraud in obtaining re-issue, 

112. 
Infringers, jointly and severally liable, 127-128. 

Injunction, granted by United States courts of equity, to restrain in- 
fringement, 133. 
preliminary, grant of, discretionary with court, 138. 
when granted, 138. 
Interference, cannot be declared between a patent and application for 
re-issue of earlier patent, 111. 
concession of priority in, 98. 
examiner, duties of, 96-98. 

not authorized for purpose of determining questions of abandon- 
ment or public use, 90-91. 
preliminary, 97. 
proceedings in, 96-99. 
testimony in, 97-98. 
Interfering applications, 96-99. 

patents, 99, 100. 
Introductory, 9. 

Invention, not abstract conception, subject of patent, 13. 
abandonment of, what is, and how proved, 31, 32. 
future not assignable, 115. 

incomplete, caveat not conclusive evidence of, 143. 
may be assigned before patent, 113-115. 
perfection of, means making it capable of practical use, 26. 
prior, defence of, what is meant by, 27-29. 

to defeat or bar a patent, must have been reduced to 

practice, 21. 
abroad, not patented or published, will not defeat United 
States patent, 29. 
reasonable diligence in perfecting, what is, 25, 26. 
relation of employer and employee in regard to, 24, 25. 



159 



Invention, to be patentable must not have been known or used before by 
• others in this country, or patented abroad, or described in any 
publication, 20, 27. 

to be patentable, must be useful, 20. 

what constitutes in the sense of intellectual conception, 23. 
Inventor, first is he who first perfects with reasonable diligence; if not, 
a later inventor who may be first to reduce to practice, 26. 

to make oath or afl&rmation, 71. 

what is required of him in making application, 70-75. 
License, assignable only as an entirety, 120, 121. 

confined to a certain person or place to be exercised only by 
grantee or in that place, 121. 

exclusive, and grant of exclusive right, diiSference between, 120. 

kinds of, 120. 

need not be recorded, 120. 

not assignable unless expressly made so, 120. 

purchase of does not estop licensee from averring and proving 
invalidity of patent, 122. 

to use one machine implies right to build it and repair it, 121. 
Licensee cannot sue in his own name, 135. 

when estopped by covenants and recitals in license from con- 
testing validity of patent, 122. 

when he may be treated as infringer, 121, 122, 128, 129. 

who is, 120. 
Machine, meaning of word in statute, 34. 

new, or improvements on old, patentable, 34. 

principle of, what is, 78. 
Manufacture, articles of, what are patentable, 65. 

what the meaning of the word in statute, 34. 
Marking pa.tented articles, effect of neglect, 139. 

what required, 139. 
Material, mere substitution of one for another not patentable, 52-54. 
Models, 71. 
Monopolies, abolition of, 10. 

difference between, and patents, 11, 12. 

statute of, 10. 
Neglect in filing a disclaimer, what is, and what is not, 104. 

unreasonable, in filing disclaimer, effect of, 103. 
New matter, not part of original invention, not admissible in re-issues, 

106-108. 
Notice of special matter of defence, 135-137. 
Novel invention, what is, 20. 
Novelty of invention necessary to patent, 19, 34. 
Oath, before whom it may be taken, 71. 

for caveat, 142. 

or affirmation of invention, what it must include, 71, 72. 
Patent Act of 1790, 11. 



160 INDEX. 



Patent Act of 1793, 11. 
1836, 11. 

1870, now in force, 11. 
application for, 70-95. 

to be made by inventor, if living; if dead, by 
executor or administrator, 19. 
assignment of, 116, 117. 
cannot cover any and every mode of combining certain elements 

to attain a result, 62. 
grant of, raises presumption that patentee is inventor of per- 
fected and useful invention, 21. 
granted to assignees of inventor or discoverer, 19. 
interfering, bill in equity to annul, 99. 
laws, power of Congress to enact, 11. 

purport of, 18. 
marks, fraudulent use of, 139, 140. 

may contain as many claims as there are novel points in the in- 
vention, 82. 
meaning of, 91. 

not anticipated by rejected and abandoned application, 94. 
not for abstract inventions, but for embodied inventions, 13. 
not invalidated by the invalidity of one of several claims, 82. 
prior invention which will defeat must have been reduced to 

practice, 21. 
recital of, that applicant has complied with provisions of the 

law, conclusive in absence of fraud, 74. 
re-issued, effect and operation of, 112. 

for the unexpired term of original patent, 106. 
right to, lost by abandonment of invention, or public use or sale 

for more than two years before application, 19, 31, 32. 
second for same invention, when may issue, 99. 
surrender of, takes effect on grant of re-issue, 112. 
when validity of may be inquired into by state courts, 135. 
Patentable combination, what is, and what is not, 57-65. 

may consist of new or old parts, 59. 
invention, one perfected and adapted to use, 20. 
new use of old device or process, one not analogous to previous 

uses of the same device or process, 51. 
subjects, new and useful arts, machines, manufactures, or com- 
positions of matter, or improvements thereof, 19, 34. 
Patented article must be marked, 139. 
articles, marking of, 139. 

neglect to mark, 139. 
purchasers of, 124-126. 
Patentee of combinations entitled to equivalents, 63. 
Patents and capital, 17, 18. 

as promoters of the useful arts, 15-17. 



161 



Patents, defective, remedies for, 101-112. 
duration of, 113. 

design, 146. 
equity of, in limiting grant to first inventors, 12, 13. 
for articles of manufacture, 65-67. 

combination, 57-65. 
defeated by what prior use, 27, 28. 
for composition of matter, 67, 68* 
designs, 146, 151. 
discoveries, 35-44. 
improvements, 68, 69. 

must be distinctly limited to the improve- 
ments, 69. 
do not entitle patentee to use the original in- 
vention without consent, 69. 
for inventions previously patented abroad, 72, 73. 

what granted, 34, 69. 
government does not guarantee validity of, 101. 
granted for useful inventions, 20. 

new things or processes in the practical arts, 46. 
to inventors and discoverers, 19. 
interfering, 99, 100. 

cancellation of either or both may be decreed by 
court having jurisdiction, 100. 
justice and utility of, 13-17. 
may be obtained by aliens, 20. 
not granted for abstract " principles or functions," 45. 

to be considered monopolies in the odious sense of the word, 
12. 
obtainable by bill in equity, 88. 
of monopoly, 10. 
origin of, 9. 

to whom granted, 19-33. 

when may be re-issued in several divisions, 110, 111. 
Penalty for fraudulent use of patent marks, 139, 140. 
Perfected invention, caveat not evidence of, 144. 

Perfecting invention with reasonable diligence necessary to preserve 
rights, 22-26. 
invention means completion so as to be of some practical utility, 
26. 
Philosophical experiment, held no infringement, 130. 
Practice, reduction to, 21-29. 

Preliminary injunction, grant of, discretionary with eourt, 138. 
when granted, 138. 
interference, 97. 
' questions decided by commissioner, 87. 
statement in interference, 97. 

11 



162 



Preliminary statement not evidence for party making it, 98. 
Principles, abstract, not patentable, 35. 

first application of, 38-44. 
Prior invention, defence of, what is meant by, 27-29. 

knowledge and use abroad will not of themselves defeat 

a patent, unless patented or published, or known to 

patentee at the time of making application: Sec. 

4923, R. S., 29, 3a. 

patent or printed publication, requisite character of, to defeat 

patent, 30, 31. 
use not by the public generally, but in public by a single per- 
son, sufficient to defeat a patent, 28. 
use to defeat a patent must have been in manner accessible to 
the public, 27. 
Priority, concession of, interferences, 98. 
Privileges, exclusive, at common law, 9. 

Processes, new, patentable, whether carried on by tand, or old or new 
mechanism, 47. 
patentable, included under general term " useful art,*' 34. 
Purchasers of patented articles under extended term, 125. 
Product of patented machine, sale or use of, no infringement if product 

is not patented, 130. 
Protection afforded by caveats, 144, 145. 

Publication (printed), here or abroad prior to invention, a bar to a 
patent, 20-27. 
prior printed, means work intended for and made accessible to 
public, 30-31. 
Public use for more than two years before application for patent, effect 
of, and what is, 31, 32. 
use, interference not declared to inquire intoy 90, 91. 
Purchaser, of invention, before application for patent, rights of, 33. 
patented articles, rights of, 124-126. 

machine by sheriff's sale does not by purchase take 
right to use, 131. 
Reasonable diligence in perfecting invention, meaning of, 25, 26. 
Recording assignment, not pre-requisite to operation, 119". 
Reduction to practice, 21-29* 
Re-issue, 106-112. 

application cannot be put in interference with a later patent. 111. 
model and drawings not to be altered excepting each 
by the other, 110. 
applications to undergo examination. 111. 
as a remedy for claims too broad, 106, 107. 

defective and insufficient specification, 108. 
fraud in obtaining cannot be set up as a defence in action for 
infringement, 112. 



163 



Re-issue, inventor must make application for^ if living, unless patent 
assigned prior to July 8th 1870, 110. 
of patent, abandonment of all claim under original, 112. 
remedy for claim too limited, 107, 108. 
specificjation must not contain new matter not part of original 

invention, 106-108. 
to be for same invention as described in original patent, 106-111. 
to what eases applicable, 106-108. 
Re-issued patent, effect and operation of, 112. 

patents granted for the unexpired term of original patent, 106. 
in several divisions may be granted for distinct and 
separate parts of the thing patented, 110, 111. 
patent pre&umed by the courts to be for the same invention as 
the original, unless clearly repugnant as matter of legal con- 
struction, 112. 
Rejection, notice of, ta be given ta applicant, *84:, 85. 

of application, 85. 
Rejected application, prosecution of by bill m equity, 8S, 89. 
Remedies for defective patents, 101-112^ 
Renewal of caveat, 142. 

applications, 93, 91. 
Rights of purchaser, before application for patent, 32, 33, 

to patent lost by abandonment, or public use or sale for more 

than two years before application, 19, 31, 32. 
of inventor, referred to time of conception if perfected and 
adapted to use with reasonable diligence, 22. 
Sale by sheriff does not confer right on purchaser to use patented ma- 
chine, 131. 
of m*aiterials of patented machines is no infringement, 
131. 
infringement by, 127. 
Specifications and claims, 76-83'. 

construed by the courts liberally, 79, 80. 

defective remedy by re-issue, 106. 

in case of machine mrust explain principle and best mode of 

applying principle, 78, 79. 
must unable those skilled in the art to make the invention, 77. 
must not conceal anything necessary to carry out the invention, 

77. 
need not detail those things within the ordinary knowledge of 

those billed in the art, 77. 
need not be intelligible to the members of the public generally, 

77. 
of re-issued patent, not to contain new matter, 106-108. 

re-issue when new matter admissible on proof satisfactory to 
commissioner, 110. 
Spcciftcation, vague or erroneous, as a whole, is bad, 80. 



164 INDEX. 



State courts have jurisdiction of actions upon contracts concerning 
patents, where parties are residents of same state, 135. 
no jurisdiction in actions for infringements, 135. 
when they may inquire into validity of patent, 135. 
Statute of monopolies (English), patents for new inventions excepted 

from, 10. 
Substitution, mere, of one material for another, not patentable, 52-54. 
Suits for infringement, 134. 

may be brought by executor or administrator, 
134. 
Supreme Court, District of Columbia, appeals to, 85. 

United States, appeals to, 1.S8. 
Surrender of patent takes effect on grant of re-issue, 112. 
Testimony in interference cases, 97, 98. 
Use, double, what is, 47-50. 
infringement by, 127. 

new, of old things, when not patentable, 47-50. 
of patented article by purchaser, 124-126. 
Useful arts, patents as promoters of, 15-17. 

meaning of, as regards design patents, 148-151. 
Utility, capability of being used, 21. 

of invention necessary to patent, 20. 
Validity of patents not guaranteed by government, 101. 
Vessels, foreign, use of patented inventions on, 130. 
Witnesses in interference cases, 97. 

Witness in interference cases not compelled to disclose secret inven- 
tion of his own, 97* 



THE END. 



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